Litigation

VideoLabs, Inc. v. ASUSTeK Computer Inc.

terminated/closed

6:22-cv-00720

Filed
2022-06-30
Terminated
2025-07-30

Patents at issue (1)

Plaintiffs (1)

Summary

VideoLabs sued ASUSTeK in the Western District of Texas asserting US 7,525,553 among a multi-patent portfolio. The docket was terminated/closed on 2025-07-30 and includes stayed and closed flags.

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 thoroughly before drafting.

Case Overview and Background

The parties. VideoLabs, Inc. is a Palo Alto, California–based patent monetization entity (2100 Geng Road, Suite 210, per its PTAB mandatory notice) that does not make or sell products; it licenses and litigates acquired patent portfolios, and has described itself in its own contentions as "a professional intellectual property services company and licensing platform." Unified Patents' PTAB portal classifies it as an "NPE (Patent Assertion Entity)" and the defendant as a "Large Operating Company." Its assertions are portfolio-assembly driven — e.g., U.S. 8,291,236 was originally issued to Digital Keystone, Inc. and reached VideoLabs under a Patent Purchase Agreement dated April 7, 2023, after which VideoLabs first asserted it. A related entity, VL Collective IP LLC, has appeared alongside VideoLabs as co-plaintiff in its Amazon actions. The defendant, ASUSTeK Computer Inc. (ASUS), is a Taiwanese operating company — one of the world's largest motherboard makers and a top-tier PC vendor — selling notebooks, desktops, tablets, monitors, smartphones, and servers. The parties are not competitors, a point defendants have repeatedly used in stay motions.

Accused technology and asserted patents. The asserted instrumentalities are a broad, functionality-defined grab bag rather than a specific SKU: "servers, desktop computers, laptop computers, tablet computers, monitors, and/or smartphones" made, used, sold, or imported by ASUS, with infringement tied to features such as H.264 video encode/decode, CPU/GPU management, touch screens, and HDCP content protection (Amended Complaint ¶¶1, 24, 45, 52, 66). The live pleading (D.I. 9, Amended Complaint, filed Nov. 2, 2023) asserted seven patents in seven counts:

  • '238 (U.S. 7,769,238, "Picture Coding Method and Picture Decoding Method") — encoder-side: predict a block's non-zero coefficient count from neighboring blocks and select a variable-length code table (H.264 CAVLC).
  • '878 (U.S. 8,139,878) — the decoder-side counterpart in the same VLC-table-selection family (asserted, at least claim 1).
  • '542 (U.S. 8,208,542) — a video-coding patent that the February 2025 order left in the first trial group; I could not verify its specific disclosure from the sources reviewed.
  • '027 (U.S. 7,219,027) — a monitoring device for a hardware component (accused against CPU/GPU monitoring and management).
  • '535 (U.S. 7,525,535, "Portable Terminal") — the patent listed in this case record's metadata; the asserted theory is a body with an integrally formed transparent window and a capacitive touch screen disposed beneath it, eliminating the touchpad opening and reducing dust/water ingress (asserted claim 5, accused against ASUS touch screens). Note: this technical sketch comes from an AI-generated complaint-analysis page summarizing the pleading, not from a court opinion; I did not independently verify the '535's specification or its original assignee.
  • '059 (U.S. 7,970,059, "Variable Length Coding Method and Variable Length Decoding Method") — arithmetic coding of coefficient magnitudes with one-way probability-table switching.
  • '236 (U.S. 8,291,236, "Methods and Apparatuses for Secondary Conditional Access Server," issued Oct. 16, 2012) — a secondary conditional-access server bridging a primary security system and secondary home-network clients; accused against HDCP functionality (claim 130 asserted).

One discrepancy worth flagging: a secondary summary of the Amended Complaint reports that it described the '238 patent as "terminally disclaimed on July 6, 2023," which sits awkwardly with the '238 being sent to trial in 2025. I could not verify that fact and treat it as unreliable.

Procedural posture and venue. The case is VideoLabs, Inc. v. ASUSTeK Computer Inc., No. 6:22-cv-00720-ADA, W.D. Tex., Waco Division, before Judge Alan D. Albright, filed June 30, 2022 as part of a same-day coordinated wave that also hit Lenovo/Motorola Mobility (6:22-cv-00721) and MSI (6:22-cv-00722); a parallel ASUS action (6:23-cv-00640) was voluntarily dismissed. VideoLabs sent a notice letter on May 17, 2023 covering the '027, '535, and '236 (Am. Compl. ¶17), then amended to add those counts in November 2023. Claim construction briefing addressed the '027, '059, '542, and '236. On February 6, 2025, the Court granted a joint motion to bifurcate and stay Counts IV ('027), VI ('059), and VII ('236) pending trial of the remaining counts ('238, '878, '542) — see D.I. 76, a copy of which is at the PTAB exhibit filing. Jury trial was set for August 4, 2025, but the docket terminated on 2025-07-30 — five days before trial — with flags "AAC3, CLOSED, PATENT, STAYED" (Docket Alarm docket). I did not locate the dismissal order or confirmation that it was a settlement; that inference is circumstantial. Venue matters here on several axes: Waco/Albright was the highest-volume patent plaintiff venue in the country when this was filed, with Judge Albright's OGP 4.4 rules and a fast time-to-trial track; the court's willingness to bifurcate and stage the trial here is itself a notable docket-management data point; and the Waco docket feeds directly into PTAB Fintiv-type discretionary-denial fights over whether parallel district litigation justifies denying institution.

Why it's notable. This case was the anchor of a VideoLabs campaign against the PC/consumer-electronics supply chain (ASUS, Lenovo/Motorola, MSI, HP, Roku, Hisense, Amazon) that pressed patents against standards-implemented functionality — H.264/AVC bitstream coding, HDCP 2.2 — that is embedded in essentially every modern computer, phone, and tablet. That makes the exposure systemic rather than product-specific, and likely explains the bifurcation/stay structure and, ultimately, pre-trial resolution. There is also a dense IPR linkage: ASUS filed IPR2025-00304, -00305, and -00306 on December 17, 2024 challenging the '236 (e.g., IPR2025-00305 challenged claims 48–50, 57, 82–84, 91, 116–118, 125, 140–142) and moved for joinder to Roku's IPR2024-01025, attempting to ride the Board's institution decisions in Roku's IPRs on the same patent. ASUS then moved to withdraw its petitions on February 27, 2025, and the Board terminated the proceedings pre-institution on March 18, 2025 (refunds approved May 12, 2025) — see IPR2025-00305 and IPR2025-00306. Roku's instituted IPRs had already been terminated on settlement in late December 2024, and the same history was then used by later petitioner Hisense to argue there were no "settled expectations" supporting discretionary denial — VideoLabs "terminate[d] the IPRs and settled the case less than three weeks after institution" (Hisense opposition, IPR2025-00882). Read together with HP's May 2025 dismissal with prejudice (6:22-cv-01086) and a related N.D. Cal. ancillary motion in which VideoLabs attached its ASUS infringement contentions (In re Motion of VideoLabs, Inc., 5:25-mc-80039), the record shows a portfolio campaign that largely monetized through 2024–2025 settlements rather than a merits verdict. VideoLabs' trial counsel included Troutman Pepper Locke (William D. Belanger, Bryan C. Smith) and the Ciccarelli Law Firm; I could not verify ASUS's district-court counsel from the sources reviewed.

Sourcing caveat: this overview relies on docket aggregators (Docket Alarm, Justia, Unified Patents, RPX/GreyB) and PTAB filings rather than direct PACER retrieval, and on one AI-generated complaint-analysis page for patent-by-patent technical summaries. The reason for the July 30, 2025 termination, the fate of the '535 count, and ASUS's litigation counsel are not confirmed by the sources I could reach.

Key legal developments & outcome

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

I'll research this case across multiple sources to build a chronological account.

Let me get the docket detail and look for the final disposition.

Let me pull the full docket and check for the second ASUS case.

Bottom line

VideoLabs, Inc. v. ASUSTeK Computer, Inc., No. 6:22-cv-00720-ADA (W.D. Tex., Waco Div., Judge Alan D. Albright) was filed 2022‑06‑30 and terminated/closed on 2025‑07‑30 — five days before a jury trial was set to begin on 2025‑08‑04. The docket carries CLOSED and STAYED flags. No verdict, judgment, or post‑trial ruling appears anywhere in the public record I could retrieve; the termination on the eve of trial is consistent with a pre‑trial settlement/voluntary dismissal, but I could not retrieve the dismissal order or stipulation text, so I am flagging that characterization as an inference, not a confirmed fact.

Important scope caveat: the case metadata supplied to me lists only US 7,525,535 (the “’535 patent”) as the patent at issue. The operative docket records show a seven‑patent case. The ’535 was Count V (asserted claim 5, “Portable Terminal,” directed at touch screens), but the ’535 count is not mentioned in the February 2025 bifurcation order — see the section on that below.


1. Parties, patents, and pre‑suit demands

Patent Title / subject Asserted claim Accused feature
7,769,238 Picture Coding Method and Decoding Method cl. 1 video encode/decode (CPU/GPU)
8,139,878 Picture Decoding Method cl. 1 video decode
8,208,542 (video coding family) cl. 1 video coding
7,219,027 Operation monitor device (CPU/GPU monitoring) cl. 1 CPU/GPU power management
7,525,535 Portable Terminal (issued 2009‑04‑28) cl. 5 capacitive touch screen / integrally formed window
7,970,059 Variable Length Coding/Decoding cl. 3 video playback
8,291,236 Secondary Conditional Access Server cl. 130 HDCP functionality

VideoLabs is a Delaware NPE/licensing platform headquartered in Palo Alto (Amended Complaint ¶2–3). ASUSTeK is a Taiwanese corporation (¶4).

Pre‑suit notice: VideoLabs pled it sent a notice letter on 2022‑04‑14 (covering at least the ’238, ’878, ’535 and ’059 patents) and a further notice on 2023‑05‑17 (covering the ’027, ’535 and ’236 patents). Source: Amended Complaint ¶¶15–17 (reproduced at ptacts.uspto.gov petition 1557093).

Parallel ITC action: VideoLabs filed an ITC § 337 complaint on 2022‑07‑01 against Acer, ASUS, MSI, Motorola Mobility and Lenovo over the ’238, ’878, ’542 patents and US 7,372,452; the ITC instituted an investigation in early August 2022. (Secondary/translated reporting — Tom's Hardware via IT007; treat as lower confidence.)


2. Filing and pleadings

  • 2022‑06‑30 — Complaint (D.I. 1). VideoLabs sued ASUSTeK in the Waco Division. The original complaint appears to have asserted the video‑coding family (’238, ’878, ’542) and possibly the ’059; ¶16 of the amended complaint traces notice of the ’238/’878/’542 to service of D.I. 1. (The precise original‑complaint patent set is not shown in the sources I could retrieve; I am not asserting it definitively.)
  • 2023‑07‑06 — ’238 terminal disclaimer. The amended complaint states the ’238 patent “was in full force and effect until it was terminally disclaimed on July 6, 2023,” which likely narrowed the ’238 counts to past damages. Source: Amended Complaint ¶20.
  • 2023‑11‑02 — Amended Complaint (D.I. 9). VideoLabs expanded to seven asserted patents (’238, ’878, ’542, ’027, ’535, ’059, ’236) and broadened accused products to “servers, desktop computers, laptop computers, tablet computers, and smartphones.” Remedies sought: reasonable royalty, willfulness/treble damages, accounting, permanent injunction as to the ’878/’542/’027/’535/’236, and an exceptional‑case finding. Source: Amended Complaint, D.I. 9.
  • 2023‑11‑10 — Notice of Agreed Extension of Time to Respond to Amended Complaint (D.I. 24). Confirms ASUSTeK appeared and answered the amended pleading on an extended schedule.
  • ASUSTeK’s answer/counterclaims: the docket clearly reflects a defended case (scheduling order, claim‑construction briefing, IPR activity), but I could not retrieve the text or docket number of ASUS’s answer/counterclaims, so I am not describing their specific content (e.g., invalidity counterclaim counts) rather than guess.
  • Related 2023 ASUS filing: a separate W.D. Tex. case, VideoLabs, Inc. v. ASUSTeK Computer, Inc., No. 6:23‑cv‑00640 (filed 2023‑08‑31), appears in derivative databases asserting the ’027, ’535, ’059 and ’236 patents. I could not confirm from a primary source whether it was consolidated into, or voluntarily dismissed in favor of, the 2022 case. Flagging as unresolved.

3. Scheduling and claim construction (Markman)

  • Scheduling Order (D.I. 44) — entered on a joint motion, under Judge Albright’s OGP 4.4. This is the order that set the claim‑construction and trial track. (The exact entry date is not in my sources.)
  • Claim‑construction briefing. ASUSTeK filed its opening claim‑construction positions at D.I. 47; VideoLabs filed a Responsive Claim Construction Brief addressing the ’027, ’059, ’542 and ’236 patents (preserved as Exhibit 1017 in a later PTAB proceeding — link). VideoLabs’s expert on construction was Dr. Iain E. Richardson.
  • Outcomes visible from the briefing:
    • The parties agreed to a construction of “probability table” in the ’059 patent (D.I. 47 at 3).
    • The ’027 preamble (“An operation monitor device…”) was disputed — ASUS argued it was limiting (antecedent basis for three terms); VideoLabs argued plain‑and‑ordinary meaning and no preamble limitation, citing Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229 (Fed. Cir. 2017).
    • The ’236 claim 100 and ’027 claim 1 terms were also in dispute.
  • I could not locate the actual Markman order or hearing transcript, so I am not reporting constructions the court adopted for any term other than the agreed “probability table” term.
  • For context on timing: a related VideoLabs case (against HP, No. 6:23‑cv‑00641) had claim construction set for 2024‑08‑15, and the ASUS action’s three‑patent trial set was 2025‑08‑04.

4. Substantive pre‑trial motions

  • Stay motions (parallel IPR). ASUSTeK sought a stay pending the Roku IPRs (see §6). VideoLabs opposed, arguing (i) it is an NPE that does not compete with the defendants, so a stay causes no undue prejudice, and (ii) “the ASUS Action” was scheduled for trial on 2025‑08‑04. VideoLabs also argued preclusion from an adverse ASUS outcome could “moot this case entirely.” (VideoLabs brief excerpt preserved at ptacts.uspto.gov petition 1556831.) The excerpt contains an internal tension — it describes the ’238, ’059 and ’236 as the three trial patents, whereas the February 2025 bifurcation order sends the ’238, ’878 and ’542 to trial — so I would not rely on either list alone for the final trial set.

  • 2025‑02‑06 — Order Granting Joint Motion to Bifurcate and Stay Counts (D.I. 76). The court granted the parties’ joint Rule 42(b) motion and:

    • bifurcated Counts IV (’027), VI (’059) and VII (’236) (the “Bifurcated Claims”); and
    • stayed those counts “pending completion of trial” on the remaining counts directed to the ’238, ’878 and ’542 patents.

    This order (dated 2025‑02‑06, signed by Judge Albright) was repeatedly republished as an exhibit in later third‑party IPRs (example).

  • Critical gap re the ’535: the bifurcation order does not mention the ’535 (Count V) at all, nor is the ’535 among the counts left for trial. That strongly suggests the ’535 count had already been dropped, dismissed, or otherwise resolved before 2025‑02‑06 — but no docket entry resolving the ’535 count appears in the sources I could reach. Given that this case metadata keys on the ’535, this is the most significant open question in the record as I can see it. I have found no ASUS IPR petition on the ’535.

  • I found no motion‑to‑dismiss, motion‑to‑transfer, or summary‑judgment ruling for this case. Waco/Albright transfer practice in the 2022 VideoLabs wave generally did not produce venue transfers, and the case remained before Judge Albright throughout, so an unrecorded transfer motion is unlikely but unverified.


5. Discovery milestones of strategic significance

  • The confirmed discovery‑adjacent event is a miscellaneous proceeding in the Northern District of California, In re Motion of VideoLabs, Inc., No. 5:25‑mc‑80039‑SVK (N.D. Cal.), with filings beginning on/about 2025‑03‑05. Exhibit D to VideoLabs’s submission (CourtListener) reproduces VideoLabs’s infringement contentions from the WDTX case (direct, induced and contributory infringement under §§ 271(a)–(c), incorporating the Amended Complaint D.I. 9 and appendices A–F, H, I of accused manuals, websites and videos). This is consistent with VideoLabs seeking third‑party discovery in California to support the Texas case; I could not confirm the precise relief sought or its outcome.
  • The infringement contentions themselves are strategically notable: VideoLabs’s induced‑infringement theory rests on ASUS manuals/websites/videos instructing end users, and it alleges willful blindness to VideoLabs’s portfolio.
  • No protective‑order, privilege, or discovery‑sanction disputes surfaced in my searches.

6. Parallel PTAB proceedings and their effect

Roku‑filed IPRs (the lead challenges):

Proceeding Patent Filed Key events
IPR2024‑01023 ’236 2024‑06‑14 Instituted 2024‑12‑05; joint motion to terminate filed 2024‑12‑23 on settlement of all disputes over the ’236; terminated 2025‑01‑21
IPR2024‑01024 ’236 2024 Related Roku challenge
IPR2024‑01025 ’236 2024 Related Roku challenge

Sources: PTAB papers quoted in ASUS’s IPR filings (IPR2025‑00305 record).

ASUS‑filed IPRs (copycat/joinder strategy — all effectively failed):

  • ASUSTeK Computer Inc. v. VideoLabs, Inc., IPR2025‑00304, ‑00305 and ‑00306, all filed 2024‑12‑17. IPR2025‑00304 and IPR2025‑00305 target US 8,291,236 (claims 48–50, 57, 82–84, 91, 116–118, 125, 140–142 in ‑00305) and were filed with motions for joinder as “copycat” petitions to the instituted Roku IPR. I could not confirm the subject patent of ‑00306.
  • VideoLabs opposed joinder on 2025‑01‑16, arguing (i) the Roku IPR’s settlement termination would moot joinder, and (ii) joinder would let ASUS circumvent the 35 U.S.C. § 315(b) one‑year bar (ASUS’s petitions came more than a year after service of the ’236 complaint).
  • After the 2025‑01‑21 termination of the Roku IPR, ASUS moved on 2025‑02‑27 to withdraw/dismiss its petition, and the Board, in a 2025‑03‑18 order in IPR2025‑00305, granted the motion to dismiss the petition and denied the motion for joinder (panel: APJs Easthom, White, Murphy). IPR2025‑00304 was on the same track.
  • Effect on the litigation: ASUS’s ’236 IPRs never reached institution and produced no PTAB estoppel or FWD. Instead of a court‑ordered IPR stay, the parties obtained the contractual/consensual stay via the joint bifurcation motion (D.I. 76), which parked the ’027, ’059 and ’236 counts until after trial on the remaining counts.
  • Third‑party IPRs on the same portfolio (different defendants): Roku’s IPR2024‑01023/‑01024/‑01025 (’236) and additional 2025 filings such as Hisense USA Corp. v. VideoLabs, IPR2025‑00881 (petition exhibits filed 2025‑05‑27), which cite the ASUS action and its bifurcation order as evidence about the broader VideoLabs campaign. (Some search hits that appear to cite the D.I. 76 bifurcation order — e.g., Tesla v. Intellectual Ventures II, IPR2025‑00222 / IPR2025‑00340 — are unrelated cases merely attaching the order as an exhibit.)

7. Trial, verdict, and post‑trial motions

  • Trial setting: a jury trial was set for 2025‑08‑04 in the ASUS action (per VideoLabs’s stay opposition), with plaintiff having demanded a jury at filing.
  • No trial occurred. The docket reports the case terminated on 2025‑07‑30, immediately before the trial date.
  • No verdict, JMOL, new‑trial, or fee/exceptional‑case ruling appears. The complaint’s requests for treble damages, an accounting, attorney’s fees, and injunctive relief were never adjudicated on the merits as far as the public record shows.

8. Final disposition / present posture

  • Status: closed/terminated (2025‑07‑30), with a persisting STAYED flag (the stayed bifurcated counts were never revived), Judge Albright presiding, W.D. Tex. Waco Division — Docket Alarm case page.
  • Most probable disposition: pre‑trial settlement and voluntary dismissal of the entire action (including the stayed ’027/’059/’236 counts) on the eve of the 2025‑08‑04 trial. This fits the timeline and the contemporaneous collapse of the Roku ’236 IPRs by settlement (terminated 2025‑01‑21), which indicates VideoLabs was running a settlement track on the ’236 in early 2025.
  • Not confirmed: the identity of the dismissal mechanism (joint stipulation under Rule 41(a)(1)(A)(ii) vs. motion to dismiss), the terms of any license/settlement, and whether the ’535 count was formally dismissed. The specific terminating docket entry was not retrievable from the free sources I used.
  • No Federal Circuit appeal is associated with this case.

9. Confidence / sourcing notes

  • High confidence: case number, court, judge, filing date (2022‑06‑30), termination date (2025‑07‑30), the seven‑patent amended complaint (D.I. 9, 2023‑11‑02), the agreed‑extension notice (D.I. 24, 2023‑11‑10), the scheduling order (D.I. 44), ASUS’s opening constructions (D.I. 47), and the bifurcation/stay order (D.I. 76, 2025‑02‑06); the Roku IPR2024‑01023 institution (2024‑12‑05), settlement motion (2024‑12‑23) and termination (2025‑01‑21); ASUS IPR2025‑00304/‑00305/‑00306 filed 2024‑12‑17 and dismissed/joinder‑denied by the 2025‑03‑18 order; VideoLabs’ PTAB counsel of record William D. Belanger and Bryan C. Smith (Troutman).
  • Lower confidence / unverified: which patents were in the original 2022 complaint; ASUS’s answer and counterclaim text; the Markman ruling on disputed terms; the nature and outcome of N.D. Cal. misc. 5:25‑mc‑80039‑SVK; the relationship between 6:22‑cv‑00720 and 6:23‑cv‑00640; the ITC investigation details; and the July 2025 settlement characterization. I have deliberately not supplied names of district‑court counsel, damages figures, or a dismissal docket number, because no reliable source for them surfaced in my searches.

Plaintiff representatives

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

I'll research the docket and counsel appearances for this case.

Let me pull the docket-level counsel details and verify appearances.

Counsel of Record for Plaintiff VideoLabs, Inc. — VideoLabs, Inc. v. ASUSTeK Computer Inc., No. 6:22-cv-00720-ADA (W.D. Tex., Waco Div.)

Bottom line: VideoLabs was represented by a Boston-anchored team from Troutman Pepper Hamilton Sanders LLP (renamed Troutman Pepper Locke LLP after the Jan. 2025 Locke Lord merger) — William D. Belanger as lead — paired with Waco attorney Max Ciccarelli of the Ciccarelli Law Firm LLC as local counsel. The same Troutman team represented VideoLabs as Patent Owner in the parallel ASUS IPRs. VideoLabs also appears to have used in-house IP counsel, but I could not verify that individual's name from public sources.

Plaintiff's trial team

Attorney Role Firm / Office Note on relevant experience
William D. Belanger Lead counsel for VideoLabs (district court and PTAB) Troutman Pepper Hamilton Sanders LLP → Troutman Pepper Locke LLP, 125 High Street, 19th Fl., Boston, MA Registered patent attorney (Reg. No. 40,509); designated Lead Counsel for VideoLabs in IPR2025-00304/305/306 (ASUS v. VideoLabs) and lead signatory on VideoLabs' W.D. Tex. and ITC filings.
Gregory D. Len Co-counsel / trial team (pro hac vice, Boston) Troutman Pepper (Locke) LLP, Boston, MA Named on VideoLabs' pleadings and notices of related cases in 6:22-cv-00720 and sister W.D. Tex. suits.
Frank D. Liu Co-counsel / trial team (Boston) Troutman Pepper (Locke) LLP, Boston, MA Same VideoLabs trial team across the Waco/ITC matters.
Griffin Mesmer Co-counsel / trial team (Boston) Troutman Pepper (Locke) LLP, Boston, MA Same VideoLabs trial team.
Ryan C. Deck Co-counsel (New Jersey office) Troutman Pepper (Locke) LLP, 301 Carnegie Center, Suite 400, Princeton, NJ Named on VideoLabs filings in the related VideoLabs/ASUS-ITC filings.
Ana Spone Co-counsel (Boston) Troutman Pepper (Locke) LLP, Boston, MA Appears on VideoLabs' related-case notices in the parallel W.D. Tex. VideoLabs suits (appearance in 6:22-cv-00720 itself not individually confirmed).
Max (Massimo) Ciccarelli Local counsel (Waco) Ciccarelli Law Firm LLC, 100 N. 6th St., Suite 502, Waco, TX (TX Bar No. 00787242) VideoLabs' recurring Waco local counsel in its W.D. Tex. campaign (including VideoLabs v. HP, 6:23-cv-00641); signs VideoLabs' Waco filings.

In-house: VideoLabs' PTAB power-of-attorney papers were executed by VideoLabs' General Counsel & Chief IP Counsel (title appears in the IPR2025-00305 Power of Attorney), but the individual's name is not visible in the public excerpts I could retrieve — not confirmed, so I am not naming anyone.

PTAB-only name (not confirmed in the district court docket): Bryan C. Smith (Troutman Pepper Locke LLP, Rochester, NY; Reg. No. 59,767) was designated VideoLabs' back-up counsel in the ASUS IPRs. He may not have appeared in 6:22-cv-00720.

Key sourcing / caveats

  • The clearest direct evidence tying the Troutman team to this case is VideoLabs' Notice of Related Cases and sister-case filings, which identify "William D. Belanger, Gregory D. Len, Frank D. Liu, Griffin Mesmer, Ana Spone[,] Troutman Pepper Hamilton Sanders LLP … Ryan C. Deck … Counsel for Plaintiff VideoLabs, Inc." and list "6:22-cv-00720-ADA: Active case against ASUSTeK Computer Inc." (VideoLabs v. HP, 6:23-cv-00641, Dkt. 11).
  • The same signature block (Belanger, Len, Liu, Mesmer + Ciccarelli; plus Deck), including the service list of ASUS's defense counsel at Fish & Richardson, Erise IP, and Cherry Johnson Siegmund James, appears in VideoLabs' Dec. 2, 2024 filing in the VideoLabs ITC/ancillary matter (In re Motion of VideoLabs, Inc., N.D. Cal. 5:25-mc-80039, Dkt. 7-5).
  • The Troutman team's designation as VideoLabs' counsel in the ASUS IPRs (confirming the same core team) is in IPR2025-00305, Paper 6–7 (Jan. 3, 2025) — Belanger (Lead), Smith (Back-up), Troutman Pepper Locke LLP (docketalarm IPR2025-00305).
  • What I could not verify: the individual appearance docket entries (Dkt. Nos.) for each attorney in 6:22-cv-00720, the identity of the original 2022 complaint signatories, whether any of these attorneys withdrew, and whether a separate Waco local-counsel entry was filed given that the W.D. Tex. does not require local counsel. No sealed-counsel issue was identified; rather, my access to the full PACER docket sheet was limited to secondary aggregators (Docket Alarm, CourtListener, Ex Parte AI docket summaries), so treat per-attorney appearance dates as not independently confirmed. Do not rely on this table for a formal certificate of service.
  • Case context: complaint filed 2022-06-30; Amended Complaint filed Nov. 2, 2023 (Dkt. 9); the case was bifurcated/stayed as to Counts IV ('027), VI ('059) and VII ('236) and proceeded on the '238, '878 and '542 patents (Bifurcation Order, Feb. 6, 2025), with the case terminating/closed on 2025-07-30 with CLOSED and STAYED flags.

Defendant representatives

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

I'll research the docket and counsel appearances for this case.

Let me look for ASUS's specific counsel appearances in the district court and related PTAB proceedings.

I found the service list. Let me pull the full document to identify all defense counsel precisely.

Counsel of Record — Defendant ASUSTeK Computer Inc.

Bottom line: ASUS's defense is being handled by two national firms plus a Waco local-counsel firm. Erise IP, P.A. (Overland Park, Kansas) is the lead trial team in this district court action and is also the firm that prosecuted ASUS's parallel IPRs against VideoLabs at the PTAB. Fish & Richardson P.C. (Washington, DC) appears alongside them, and Cherry Johnson Siegmund James, PLLC (Waco) serves as local counsel.

⚠️ Sourcing caveat up front: I could not open the W.D. Tex. docket sheet itself (docketalarm/CourtListener PACER dumps for 6:22-cv-00720 do not expose the per-attorney appearance entries in the material I retrieved). The roster below is reconstructed from (a) the Dec. 2, 2024 certificate of service in the related N.D. Cal. miscellaneous action, In re Motion of VideoLabs, Inc., No. 5:25-mc-80039-SVK (CourtListener docket 69641355, Exhibit D to Dkt. 7), which expressly identifies each addressee as "Counsel for Defendants ASUSTek," and (b) the PTAB counsel designations in ASUS's IPRs. I've flagged where I have only a surname or can't confirm a first name — I have not filled gaps by guessing.


1. Erise IP, P.A. — Lead / trial counsel (Overland Park, KS)

7015 College Blvd., Suite 700, Overland Park, KS 66211 · (913) 777-5600 · case-specific service address ASUS-VL@eriseip.com

Name Role Notes
Eric A. Buresh (Reg. No. 50,394) Lead counsel — lead counsel of record for ASUS in the parallel PTAB proceedings; Erise IP is the district-court lead firm Erise IP co-founder/name partner; a very active W.D. Tex. and PTAB patent litigator (Erise is one of the highest-volume firms before Judge Albright). Designated lead counsel for Petitioner in ASUSTek Computer Inc. v. VideoLabs, Inc., IPR2025-00305 (’236 patent), served Dec. 17, 2024.
Christopher R. Schmidt (Reg. No. 63,982) Counsel of record; named as back-up counsel in ASUS's IPRs Listed on the ASUS service block in the ASUS-VL matter; Erise IP partner, patent-trial and PTAB practice.
Nickolas R. Apel Counsel of record Named in the same ASUS service block (Erise IP, Overland Park). Formerly of Lewis Brisbois/Husch Blackwell; patent litigation.
Jacob C. Alstadt Counsel of record (his /s/ signature appears on the ASUS/VideoLabs service certificate) Erise IP associate/attorney, W.D. Tex. and PTAB patent litigation.
[–] Marriott Counsel of record Only the surname is legible in the retrieved snippet of the service block; I could not confirm the first name. Listed with Erise IP.
[–] Raw Counsel of record Same limitation: only the surname is legible in the retrieved text. Do not treat this as a confirmed name.

2. Fish & Richardson P.C. — Additional defense counsel (Washington, DC)

1000 Maine Ave. SW, Suite 1000, Washington, DC 20005 · (202) 783-5070

Name Role Notes
Joseph V. Colaianni, Jr. Counsel of record (co-lead/principal defense counsel alongside Erise) Registered patent attorney and senior F&R litigation principal; his firm bio lists lead-counsel roles in ITC patent actions, e.g. Certain Sintered Rare Earth Magnets, Inv. No. 337-TA-855 (lead counsel for respondent Harman International).
Linhong Zhang Counsel of record F&R Washington, DC principal; electrical/computer-arts patent litigation (video coding, wireless, semiconductor portfolios).
[–] Hoffman Counsel of record (hoffman@fr.com) Only the surname is recoverable from the retrieved service block; first name not confirmed.

3. Cherry Johnson Siegmund James, PLLC — Local counsel (Waco, TX)

Waco, Texas · (254) 732-2242 / (866) 627-3509 · m.siegmund@cjsjlaw.com

Name Role Notes
[M.] Siegmund Local counsel (W.D. Tex. admission / local-rule compliance) Waco-based firm long used for local-counsel appearances in Waco Division patent cases. Surname only in the public snippet; first name not verified.

Parallel PTAB proceedings (same party, different counsel designations)

ASUS filed IPRs against VideoLabs in December 2024, and its PTAB counsel designations confirm the Erise IP bench:

  • IPR2025-00305 (ASUSTek Computer Inc. v. VideoLabs, Inc., U.S. Pat. No. 8,291,236): Eric A. Buresh = lead counsel; Christopher R. Schmidt = back-up; both Erise IP, service via PTAB@eriseip.com. VideoLabs was represented by Troutman Pepper Locke (William D. Belanger, lead; Bryan C. Smith, back-up). The proceeding was terminated on March 18, 2025, with ASUS filing a petitioner's request for refund on April 17, 2025 — i.e., the IPR did not reach institution.
  • A second ASUS IPR, IPR2025-00306, likewise cites VideoLabs, Inc. v. ASUSTeK Computer, Inc., No. 6:22-cv-00720 (W.D. Tex.) as its related district-court case.

Plaintiff-side counsel (for completeness / cross-reference)

VideoLabs is represented in this litigation by Troutman Pepper (now Troutman Pepper Locke) LLP — William D. Belanger, Gregory D. Len, Frank D. Liu, Griffin Mesmer (Boston), Ryan C. Deck (Princeton) — with Max Ciccarelli, Ciccarelli Law Firm LLC (Waco), as local counsel.


Context that bears on the defense team's role

  • The case was bifurcated on Feb. 6, 2025, with Counts IV (’027), VI (’059) and VII (’236) stayed; trial was to proceed on the ’238, ’878 and ’542 patents. The bifurcation/stay order was D.I. 76 (cited in the PTAB record, e.g. IPR2025-00222 Ex. 1059).
  • The ‘535 patent identified in the case metadata (U.S. 7,525,535, "Portable Terminal") entered the case by amended complaint — notice given May 17, 2023 — and the operative pleading is the amended complaint filed Nov. 2, 2023 (D.I. 9 in the W.D. Tex. docket).
  • The case closed on July 30, 2025, roughly a week before the scheduled Aug. 4, 2025 trial date, which (together with the March 2025 IPR termination and refund) is consistent with a settlement/license resolution. I have not found a public settlement agreement or dismissal order stating the cause of termination — treat that inference as unsourced.

What I could not verify

  • The individual W.D. Tex. appearance entries (which attorney filed the formal notices of appearance, and who is designated "lead" on the docket caption) — sealed or non-public in the sources I could reach.
  • Full first names for the Erise "Marriott" and "Raw" entries, and the F&R "Hoffman" entry, and the first name of local counsel Siegmund.
  • Whether any in-house ASUSTeK legal personnel (e.g., from ASUSTeK Computer Inc.'s legal department in Taipei) were involved; no in-house counsel appears on the public service lists.

Primary sources used: CourtListener, In re Motion of VideoLabs, Inc., No. 5:25-mc-80039-SVK (N.D. Cal.), Dkt. 7, Att. 5 (Exhibit D, VideoLabs service certificate, Dec. 2, 2024) — https://www.courtlistener.com/docket/69641355/7/5/in-re-motion-of-videolabs-inc/; Docket Alarm docket and PTAB papers for IPR2025-00305 (mandatory notices, power of attorney, refund request) and IPR2025-00306; Docket Alarm docket for VideoLabs, Inc. v. ASUSTeK Computer Inc. et al., No. 6:22-cv-00720 (W.D. Tex.) — https://www.docketalarm.com/cases/Texas_Western_District_Court/6--22-cv-00720/VideoLabs_Inc._v._ASUSTeK_Computer_Inc._et_al/; PTAB bifurcation order D.I. 76 (Feb. 6, 2025); Fish & Richardson attorney bio for Joseph V. Colaianni, Jr. — https://www.fr.com/team/joseph-v-colaianni.pdf.