VideoLabs, Inc. v. HP Inc.

I'll research this case to build a well-sourced overview.

Let me dig into the patents, the settlement, and the IPR linkage.

Case Overview: VideoLabs, Inc. v. HP Inc., No. 6:23-cv-00641 (W.D. Tex.)

The parties. VideoLabs, Inc. is a California-based patent aggregation and licensing company launched in October 2019 by IP-industry veterans Joe Chernesky (CEO), Bill Goldman, and Ira Blumberg, and funded by a Series A round led by Soryn IP Group and Bardin Hill Investment Partners plus roughly $10 million in debt financing (VideoLabs launch release; Lexology/IAM, Nov. 2019). It markets itself as an industry-sponsored "patent collective" whose founding members included Hewlett Packard Enterprise, Kudelski, Siemens Healthineers, and Swisscom, and it has acquired portfolios originating from Nokia, Alcatel-Lucent, Siemens, Swisscom, 3Com, HPE, Panasonic, Samsung, LG, Ericsson, and Kodak (VideoLabs licensing programs; TMCnet release). In litigation it is consistently treated as a non-practicing entity; defense stay briefing in a parallel VideoLabs suit states flatly that "VideoLabs is a non-practicing entity" with no competing products (VideoLabs v. Roku stay motion, No. 1:23-cv-01136-JHS, Dkt. 37). HP Inc. is a Delaware corporation headquartered at 1501 Page Mill Road, Palo Alto, California, which develops, sells, and distributes desktop and laptop computers — many built by overseas ODMs and imported into the U.S. (HP's Answer to Amended Complaint & Counterclaims, Dkt. 13). HP appeared as both defendant and counterclaim-plaintiff, seeking declaratory relief on the asserted patents.

The technology and patents. The accused instrumentalities are HP desktop and laptop computers, identified in the complaint as "Accused Products," with infringement tied to two distinct feature sets: video decode/streaming functionality and content-protection functionality (complaint analysis, Ex Parte AI Lab). The patents docketed for this case are U.S. Pat. No. 7,970,059 — "Variable Length Coding Method and Variable Length Decoding Method," naming Kondo et al., originally assigned to Panasonic Corporation, issued June 28, 2011 from an application filed Feb. 23, 2010 with a 2002 priority date; it covers a CABAC-style arithmetic coding scheme in which the probability table is switched in one direction once a coefficient's absolute value exceeds a threshold, and VideoLabs asserted decoding-method claim 3 (patent copy via Docket Alarm); U.S. Pat. No. 8,291,236 — "Methods and Apparatuses for Secondary Conditional Access Server," issued Oct. 16, 2012 from Application Serial No. 11/007,116 filed Dec. 7, 2004, directed to a secondary conditional-access server that bridges a primary cable/satellite CA domain to a home network's secondary security domain, enabling content on PCs and other devices — VideoLabs accused HP's High-Bandwidth Digital Content Protection (HDCP) functionality and asserted claims such as 100 and 130 (VideoLabs Sur-Reply Claim Construction Brief, Dkt. 74; Patent Owner Mandatory Notice, IPR2025-00305); and U.S. Pat. No. 7,435,608, which appears in the court's docket tags for this case (7430608; 7970059; 8291236) but whose technical content I could not verify — notably, HP's Answer to the Amended Complaint identifies only the '059 and '236 patents as the "Asserted Patents," suggesting the '608 was dropped from the operative pleading (see sourcing notes below).

Posture, venue, and significance. Filed Aug. 31, 2023 in the Waco Division of the Western District of Texas, the case was originally captioned No. 6:23-cv-00641-XR (Judge Xavier Rodriguez) but is docketed as presided over by Judge Derek T. Gilliland, who issued the standing patent procedures order (Dkt. 64, May 31, 2024) and the scheduling order (Dkt. 66, June 12, 2024, setting a Markman hearing later reset to Aug. 15, 2024 via Dkt. 73). Judge Gilliland issued the claim construction order on Aug. 26, 2024 (Dkt. 78), resolving, among other things, indefiniteness and mixed method/apparatus disputes over the '059 and § 112(f) means-plus-function disputes over the '236 (docket index). He then granted an extension of scheduling deadlines on Feb. 11, 2025 (Dkt. 90), and a Notice of Settlement was filed April 1, 2025 (CourtListener docket); by May 7, 2025, IAM reported that "HP settles US litigation with VideoLabs," making HP VideoLabs' 20th licensee of its video-technology portfolio (IAM). The docket carries both CLOSED and STAYED flags. Venue mattered because neither party is at home in the district — HP's only hook was its admitted business and employees in W.D. Tex. (Answer ¶¶ 8–12) — yet Waco/W.D. Tex. was, at filing, the nation's most attractive patent-plaintiff forum (Albright-era speed and plaintiff-favorable local rules). The case is notable as one front in a coordinated, portfolio-wide assertion campaign: the same '059 and '236 patents (and a related '238 patent) were pressed against ASUS in W.D. Tex. No. 6:22-cv-00720 (trial set Aug. 4, 2025), and VideoLabs has also sued Roku, Netflix, Meta, Amazon, Starz/Lions Gate, Acer, Lenovo, MSI, Motorola, TCL (E.D. Tex. No. 2:25-cv-00161), and Hisense, triggering a wave of parallel IPRs — including IPR2024-01023/-01024/-01025 challenging the '236 patent and IPR2025-00305 (ASUSTeK v. VideoLabs) on the '236, filed Jan. 3, 2025 (see the PTAB filings referenced in the Roku stay record and the VideoLabs mandatory notice). It is also a test case for the "collective" NPE model: a licensing vehicle funded by member companies that buys portfolios from those companies' competitors and monetizes them, having reached ~20 licensees by mid-2025 — an outcome pattern (settle-and-license rather than judgment) that is itself the headline.

Sourcing notes and open items

• '608 patent: I could not verify the title, inventors, original assignee, or asserted claims for U.S. Pat. No. 7,435,608. It appears in the aggregate docket metadata for this case but HP's Answer to the Amended Complaint names only the '059 and '236 as asserted, so the '608 was likely in the original complaint and dropped by amendment. Treat as unconfirmed.
• '236 original assignee/priority: The Dec. 7, 2004 filing date and Oct. 16, 2012 issue date are from VideoLabs' own mandatory notice in IPR2025-00305; the pre-VideoLabs chain of title (which operating company originated it) is not verified here.
• IPR petitioner identity: The '236 IPRs (IPR2024-01023/-01024/-01025) are confirmed from a stay brief in the parallel Roku action, but the petitioner for those three was not confirmed in the source I retrieved.
• Judge assignment: The "-XR" suffix on early filings and the Gilliland signature on later orders indicate a reassignment, but I did not retrieve the reassignment order itself.
• Exact dismissal instrument: The Notice of Settlement (Apr. 1, 2025) and IAM's May 7, 2025 settlement report are confirmed; I did not retrieve the specific dismissal-order entry or the license terms (VideoLabs' complaint in the Hisense action referenced H.264-adjacent patents, but whether these three patents are asserted as standards-essential or FRAND-encumbered in this case is not established by the sources reviewed).

I'll research this case thoroughly, using web search to gather docket events, rulings, and parallel proceedings.

Let me dig into the docket's final disposition, the claim construction order, counterclaims, and any parallel PTAB proceedings.

I'll search for press coverage of this case from multiple angles.

Let me dig deeper into the specific press articles and related proceedings.

I've gathered what press exists. Here is the coverage summary.

News and analysis coverage

The reporting is thin, trade-press-only, and almost entirely docket-driven. No mainstream outlet (Reuters, Bloomberg Law, Ars Technica, The Verge) or general-interest trade publication appears to have covered this case; the coverage I could actually locate comes from legal-industry trade press and litigation-intelligence vendors. Law360 maintains a case page under this caption tracking three HP-related items — an Oct. 24, 2022 report that "VideoLabs Targets HP With ITC Suit Over Video Coding IP"; an April 26, 2024 report that "HP Defeats Video Coding Patent Case At ITC," where the Commission terminated the investigation after agreeing with an administrative law judge "that the asserted claims are invalid as indefinite"; a June 3, 2024 report that a "Patent Owner Says Facts Have Changed Since It Lost At ITC," describing VideoLabs' attempt to resume its Texas suit on the theory that the ITC invalidity ruling "doesn't hold up in district court"; and, finally, the settlement. I could not find any press coverage of the Aug. 26, 2024 claim construction order (Dkt. 78) that is the substantive centerpiece of this docket.

On the disposition itself, Law360 reported on 2025-05-12 (by Andrea Keckley) that "HP Inc. and a California-based patent licensing company that accused the IT giant of infringing old Panasonic patents covering picture and moving picture coding and decoding methods agreed to end their dispute, according to a joint motion filed in Texas federal court." That is essentially the entire reported substance of the outcome: no damages figure, no settlement amount, no license terms. The only quantified datum in any outlet is a licensee count — IAM reported on 2025-05-07 that "HP settles US litigation with VideoLabs," framing HP's licence to VideoLabs' "video technology patent portfolio" as making HP VideoLabs' 20th licensee, with HP "continu[ing] to clear patent risks in the video technology space." That item was picked up and linked in industry roundups such as Sisvel's weekly news digest, which is the closest thing to independent industry reaction I found.

The most analytical coverage concerns the parallel ITC proceeding, not this docket. JD Supra's "ITC Monthly Wrap-Up: February 2024" discusses Certain Video Processing Devices and Products Containing the Same, Inv. No. 337-TA-1341, in which ALJ Bhattacharyya found U.S. Pat. No. 8,208,542 indefinite under Williamson because "judging device" and "selecting device" were nonce terms invoking § 112 ¶ 6 without corresponding structure, and it notes that VideoLabs had asserted the same claims against a different respondent a year after a different ALJ (Elliot) reached the same indefiniteness conclusion — a "second chance" dynamic the wrap-up treats as noteworthy. that proceeding involved the '238, '878, and '542 patents, not the '059/'236 asserted here, so it is context rather than coverage of this case. The ITC termination and docket also drew foreign-language trade-remedy reporting from China's MOFCOM trade-remedy site (中国贸易救济信息网), confirming the April 25, 2024 Commission determination of no violation terminating Inv. No. 337-TA-1341 as to HP.

Where accounts differ or stray from the record. (1) The trade press repeatedly describes the asserted patents as "old Panasonic patents" (Law360), which is accurate as to the '059 but is an oversimplification of the portfolio; no outlet has analyzed the '236 conditional-access patent or the HDCP theory. (2) A litigation-intelligence vendor blog, PatSnap, published a "settled" write-up that quotes a with-prejudice dismissal order and retained-jurisdiction language — but it expressly sources that order to case 6:22-cv-01086 (the 2022 Albright-era case), lists patents ('027, '878, '542, '238) that are not the patents in this case, and names Judge Albright as presiding. It should be treated as unreliable for this docket; its content appears to conflate VideoLabs' two separate West Texas suits against HP, which share the identical caption "VideoLabs, Inc. v. HP Inc." (3) The docket record I retrieved shows the Joint Notice of Settlement and Motion to Stay dated March 27, 2025 (CourtListener RECAP copy), whereas the earlier-generated section of this case summary dates the Notice of Settlement to April 1, 2025 — a discrepancy worth resolving against the PACER docket, since the press (Law360's May 12 article, IAM's May 7 item) gives no filing date and does not disambiguate which of the two HP actions the May 2025 dismissal closed.

Bottom line: the press treated this as a routine settlement-of-a-settlement-track case with no disclosed money, significant only as another data point in VideoLabs' licensee tally and in HP's broader video-codec risk-clearing — a framing that matches the case metadata's CLOSED/STAYED posture but adds nothing to the court record beyond the "20th licensee" characterization.

Sources

• VideoLabs v. Hewlett-Packard: Video Codec Patent Dispute Settled | PatSnap - Your Agentic AI Partner
• Industry: Telecommunications
• Organisation: Hisense
• International Trade : Law360 : Legal News & Analysis
• IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION
• Technology : Law360 : Legal News & Analysis
• Case 6:23-cv-00641-DTG Document 74 Filed 08/02/24 Page 1 of 16

• Case Name	Filed
  VideoLabs, Inc

• Case 6:23-cv-00641-XR Document 38 Filed 02/20/24 Page 1 of 1
• IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION
• Docket Alarm | Litigation Outcomes, Delivered - - All Courts
• Search court records on patent:(8291236) - party Bunsow De Mory - - All Courts

I'll research the counsel of record for VideoLabs in this case.

Let me dig deeper into the docket and attorney appearances.

Let me verify additional plaintiff-side attorneys and firms.

Counsel of Record for Plaintiff VideoLabs, Inc. — VideoLabs, Inc. v. HP Inc., No. 6:23-cv-00641-DTG (W.D. Tex.)

Structure of the representation. VideoLabs ran this case with a two-firm model: a Waco local counsel (Ciccarelli Law Firm) as the Texas-bar signatory of record, and a national IP trial team from Troutman Pepper Hamilton Sanders LLP (renamed Troutman Pepper Locke LLP effective Jan. 1, 2025, after the Locke Lord merger) as lead merits counsel. A third firm, Bunsow De Mory LLP, is tied to VideoLabs in this litigation via an ancillary discovery proceeding but was not confirmed on the W.D. Tex. docket (flagged below).

Local / Texas counsel of record

Lead merits counsel — Troutman Pepper (now Troutman Pepper Locke)

All appear under "ATTORNEYS FOR PLAINTIFF VIDEOLABS, INC." on the Nov. 8, 2023 Updated Notice of Related Cases (Dkt. 11), the Feb. 10, 2025 joint extension motion (Dkt. 89), and/or the Mar. 27, 2025 Joint Notice of Settlement (filed in W.D. Tex.; copy at CAND 444542-20.2). Asterisks in those filings denote pro hac vice admission.

Ancillary / related representation (not confirmed on the W.D. Tex. docket)

PTAB-side team (context, not district-court counsel of record)

For the co-pending IPRs on the '236 patent, VideoLabs designated William D. Belanger (lead, Reg. No. 40,509) and Bryan C. Smith (back-up, Troutman Pepper Locke, Rochester, NY) in its Power of Attorney and Mandatory Notice in IPR2025-00305 (Jan. 3, 2025). VideoLabs' own General Counsel & Chief IP Counsel executed the POA; the name is not visible in the excerpt I retrieved, so I am not asserting it. (Power of Attorney)

Gaps, caveats, and an unverified lead

• No sealed counsel filings identified. The counsel identities above come from public signature blocks on Dkts. 1, 11, 80, 89 and the Mar. 27, 2025 settlement notice, plus the N.D. Cal. ancillary record.
• Notice-of-appearance entries not individually retrieved. I could not pull a complete CM/ECF attorney list for the W.D. Tex. docket; the CourtListener parties page for the plaintiff lists only Massimo Ciccarelli ("ATTORNEY TO BE NOTICED"), which understates the Troutman team that signed the substantive filings. Readers needing a definitive attorney roster should pull the PACER docket sheet's attorney list.
• Unverified lead — Nixon Peabody. A Docket Alarm firm-filter search on patent 8,291,236 tagged to "Nixon Peabody" returned the VideoLabs v. HP docket, which could suggest a Nixon Peabody appearance for one of the parties. I found no corroborating filing and the same filter construct also returned the case for Bunsow De Mory (where independent evidence exists), so I treat the Nixon Peabody signal as an unconfirmed metadata artifact and expressly do not assert it. Do not rely on it without pulling the docket.
• Brittany Reeves — see flag above; firm affiliation unconfirmed.
• Transcription caution: the Dkt. 80 Markman transcript excerpt I retrieved appears to blend counsel-appearance blocks from more than one hearing (it also references a "WA:23-CV-641" caption and a separate defense lineup including "Corey Ray Houmand"), so the plaintiff-side names drawn from it (Reeves; the arguing trio of Belanger/Len/Tseng) should be treated as reliable in substance but the address/affiliation attributions as provisional.
• No contradiction with the case metadata was found. The defense-side contrast (Morgan, Lewis & Bockius — Rick L. Rambo, David J. Levy, Thomas R. Davis, Yousef AlMesad, Manu Bansal, Jason E. Gettleman) is captured in the docket but is outside the scope of this section.

I'll research HP's counsel of record in this case.

Counsel of Record for Defendant HP Inc. — No. 6:23-cv-00641-DTG (W.D. Tex., Waco)

HP's defense was handled entirely in-house at one firm: Morgan, Lewis & Bockius LLP, which represented HP in this district court action and simultaneously in the companion ITC investigation. I found no separate W.D. Tex. "local counsel" firm on HP's side — the Texas-based Morgan Lewis Houston partners (Rambo, Levy, Davis) served that function. No HP in-house attorney appears of record in the filings I retrieved.

Attorneys of record (per signature blocks and the Markman transcript)

In-house counsel

None identified. Every HP signature block I retrieved bears Morgan Lewis attorneys only; I found no HP legal-department attorney appearing of record in this case. Treat as "not found," not as a negative.

Relevant experience notes (litigation posture, not just bios)

• Companion ITC matter. HP's district court team overlapped with its respondent team in Certain Video Processing Devices and Products Containing the Same, Inv. No. 337-TA-1341 — the same VideoLabs/HP dispute in the ITC, where ALJs issued a Final Initial Determination on Feb. 5, 2024 finding no violation of § 337 as to the '542 patent. HP's ITC counsel listed in the FID: Rambo (Houston); Eric S. Namrow, Stephanie L. Roberts, Manu Bansal, and Eunjean Je (DC); Jason E. Gettleman (Palo Alto). Caution: ITC appearances do not by themselves establish district-court appearances — of these, only Rambo, Roberts, Bansal, and Gettleman are documented on this district docket by the filings I reviewed.
• Markman. HP's substantive claim-construction positions (IPXL indefiniteness and encoding-structure arguments against the '059 claim 3) were argued at the Aug. 15, 2024 hearing by Rambo, Houmand, and AlMesad, leading to Judge Gilliland's Aug. 26, 2024 claim construction order (Dkt. 78).
• Through settlement. HP's final signature block on the settlement notice (dated Mar. 27, 2025) is Rambo, Levy, and Davis — so lead counsel did not change during the case.

Sourcing caveats

• I was not able to pull the live PACER docket sheet; the counsel list above is reconstructed from Docket Alarm copies of Dkts. 65, 69, 74, and 80 (Markman transcript), plus the CourtListener-stored settlement notice and the ITC FID text.
• I did not retrieve HP's Answer to the Amended Complaint (Dkt. 13) signature block directly, so an attorney who appeared only in that early filing could be missed; conversely, "of record" status for AlMesad and for withdrawn counsel reflects their appearance in specific filings rather than each one's formal ECF appearance entry.
• Cross-reference flag: the previously generated sections characterize the docket as carrying CLOSED/STAYED flags and note the parties' Notice of Settlement; the stored copy I retrieved is dated March 27, 2025 (signed by Max Ciccarelli for VideoLabs and Rambo for HP), while the prior section cites a April 1, 2025 Notice of Settlement. These may be two separate entries (a settlement-in-principle notice vs. a later joint filing) — worth reconciling against the docket if precision matters. Neither the dismissal instrument nor any license terms are in the record I reviewed.
• No attorney names were invented; where a fact is unsourced (Houmand's bar number, AlMesad's formal appearance, in-house counsel, local counsel), I have said so explicitly.