XR Communications, LLC d/b/a Vivato Technologies v. Ubiquiti Networks, Inc.

I'll research this case thoroughly before drafting. Let me start with several parallel searches.

Good foundation. Now let me pin down the accused products, the outcome of the consolidated C.D. Cal. case, and the IPR family status.

Case Overview — XR Communications, LLC d/b/a Vivato Technologies v. Ubiquiti Networks, Inc., No. 8:21-cv-01065-DOC-JDEx (C.D. Cal.)

The parties. XR Communications, LLC is a Delaware LLC with its principal place of business at 2809 Ocean Front Walk, Venice, California, and does business under the Vivato Technologies name. Vivato was founded in 2000 as a venture-backed wireless-infrastructure startup (its complaints describe an "$80+ million venture-backed company" whose personnel included Siavash Alamouti, Ken Biba, William Crilly, James Brennan, Edward Casas and Vahid Tarokh), built phased-array/beamforming Wi-Fi base stations, and claims 400+ deployments; its patent estate is described as 17+ issued patents and applications. XR is, functionally, the licensing successor to that business — a patent-holding entity asserting the Vivato portfolio, represented here by Reza Mirzaie, Marc A. Fenster, Philip X. Wang and colleagues, and described in Stanford's NPE Litigation Database as a patent asserter. Ubiquiti Networks, Inc. (now Ubiquiti Inc.) is a New York–based, publicly traded designer and manufacturer of networking gear — UniFi enterprise/SMB Wi-Fi, airMAX wireless-ISP radios, EdgeMAX routing, AmpliFi consumer mesh — i.e., a true operating-company defendant in the Wi-Fi equipment space.

The accused technology and the patent. The single patent asserted in this docket is U.S. Patent No. 10,594,376 ("Directed Wireless Communication"), which issued March 17, 2020 from Application No. 15/486,245 (filed April 12, 2017; first-named inventor Marcus Da Silva) and claims priority to provisional application 60/423,660, filed November 4, 2002 — an almost 18-year prosecution/continuation gap. In one line: the '376 patent claims a data-communications apparatus with a processor that generates a probing signal plus separate data streams for multiple clients, a transceiver, and a "smart antenna" of at least two antenna elements driven to emit multiple directed communication beams, selectively placing nulls and peaks in a coverage area (claims 1, 12, 22 and 32 are the independents; claims 1–34 exist). In campaign-wide infringement contentions, XR's '376 theory is reported to track its '728-patent theory — networking devices supporting MU-MIMO, including 802.11ax/Wi-Fi 6-compliant gear. I could not retrieve the actual complaint or infringement contentions in 8:21-cv-01065, so the specific Ubiquiti product models accused are not confirmed by a source I can cite; Ubiquiti's Wi-Fi 6 UniFi access points are the intuitive target, but treat that as inference, not record.

Procedural posture, venue, and why it matters. XR filed on June 16, 2021 and served Ubiquiti on June 21, 2021 (Dkt. 17). The case was initially assigned to Judge James V. Selna and Magistrate Judge Autumn D. Spaeth, then transferred on June 23, 2021 under C.D. Cal. General Order 21-01 as related to XR Communications v. D-Link Systems, No. 8:17-cv-00596-DOC-JDEx (Dkt. 16), and on June 28, 2021 Judge David O. Carter consolidated it into the 2017 lead case and administratively closed the 21-1065 docket (Dkt. 18, JS-6). That is the key posture point: the standalone docket is closed after twelve days; the Ubiquiti '376 dispute has since been litigated under the 8:17-cv-00596 lead number in the Southern Division (Santa Ana) before Judge Carter and Magistrate Judge John D. Early, which is also where the Special Master's claim-construction report (Dkt. 280, Jan. 27, 2022) and the order adopting it (Dkt. 312, Apr. 18, 2022) issued. Venue mattered a great deal: C.D. Cal. is XR's home forum and the hub of its campaign, and the related-case consolidation handed XR a single experienced judge plus an existing Markman record — the practical opposite of the parallel W.D. Tex. wing XR opened the same week against ASUS (6:21-cv-622), Cisco (6:21-cv-623), Samsung (6:21-cv-625) and Amazon/eero. The case is notable on four counts. First, it is the tail end of an unusually durable assertion program: an April 2017 wave against eleven Wi-Fi vendors (Aruba, ASUSTek, Belkin, Cisco, D-Link, NETGEAR, Ruckus, Ubiquiti, Extreme, Amped, Xirrus), a 2021–23 wave adding the '376 and 10,715,235 patents, and a 2023–25 escalation into cellular, accusing AT&T, Verizon, T-Mobile and Nokia of infringing with 5G NR beamforming

I'll research this case systematically, starting with the docket and complaint.

Let me dig into the consolidated lead case and the key rulings.

Now let me track what happened to the '728/'376 claims in the consolidated case and whether a trial occurred.

Case architecture — read this first

The docket number in the caption, 8:21-cv-01065, is only a shell. It existed for twelve days and then was folded into XR's long-running consolidated Wi-Fi campaign, XR Communications, LLC v. D-Link Systems, Inc., No. 8:17-cv-00596-DOC-JDE (C.D. Cal.) (Judge David O. Carter; Mag. J. John D. Early). Every substantive event involving Ubiquiti and the '376 patent after 2021-06-28 happened in the 17-596 lead case, not on the 21-1065 docket. Any analysis of "this case" that stops at the 21-1065 docket will conclude — wrongly — that nothing ever happened. See Dkt. 18 (21-1065), Minute Order Re Consolidation (2021-06-28).

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1. Filing and initial pleadings

Ubiquiti also disclosed in that 10-Q that trial in the consolidated action was then set for 2022-10-11. Importantly, the '376 patent was not the only patent in the consolidated case: the lead action carried the '231, '296, '728, '939 and '376 patents against ten-plus defendants (D-Link, Belkin, Newo, Aruba, Netgear, Ruckus, Ubiquiti, ASUS/Asustek, Cisco, Extreme). The 21-1065 consolidation is therefore best understood as Ubiquiti being pulled into an existing multi-defendant structure rather than as a standalone two-party suit.

2. Pre-trial dispositive motion practice

There was no motion to dismiss, no motion to transfer venue, and no motion to stay in 21-1065 itself. The strategic reason is structural: by the time Ubiquiti was sued, the 17-596 case had already been stayed once pending IPR (2018-04-11), had that stay lifted on 2021-03-01 after the Federal Circuit affirmed the '296/'728 cancellations (2020-11-25), and was already in claim-construction and expert-discovery posture. Consolidation gave Ubiquiti the benefit of that work without a separate stay fight.

The dispositive motion practice that did shape Ubiquiti's exposure was judgment on the pleadings based on collateral estoppel from prior PTAB and district court judgments, and it went badly for XR:

• 2022-01-04 — Dkt. 274 (17-596): Court grants Cisco's motion for judgment on the pleadings as to all '231 patent claims, on collateral estoppel from the N.D. Cal. indefiniteness judgment in XR Communications v. Ruckus Wireless, No. 3:18-cv-01992-WHO.
• 2022-04-18 — Dkt. 313 (17-596): Court grants in part D-Link's motion for judgment on the pleadings that '728 claims 3–5 and 12 are barred as "materially the same" as '296 claims 5–7 cancelled by the PTAB. **Claim

I'll research this case's docket and counsel of record through web searches.

Counsel of Record — Plaintiff XR Communications, LLC d/b/a Vivato Technologies

Threshold docket note (important for accuracy): Case No. 8:21-cv-01065-DOC-JDEx was short-lived. The complaint was filed 6/16/2021 (signed/filed by Reza Mirzaie), served on Ubiquiti 6/21/2021, and on *6/25/2021 Judge David O. Carter ordered the case consolidated into the low-numbered lead case, XR Communications, LLC v. D-Link Systems, Inc., No. 8:17-cv-00596-DOC-JDEx, and administratively closed 21-01065*, directing that "any party/counsel not listed on the low numbered case shall file a Notice of Appearance in that case." (Final civil docket, Unified Patents; Justia docket) Because of that, the plaintiff-side roster for this case is, in substance, the Russ August & Kabat team of record in the 8:17-cv-00596 consolidated litigation, where the '376 patent was later asserted against Belkin/Linksys.

No separate local counsel and no in-house counsel appear in the record. Russ August & Kabat is Los Angeles-based, so no C.D. Cal. local-counsel pro hac vice structure was used (unlike the PTAB proceedings, where the firm's attorneys appeared pro hac vice). I found no appearance by XR/Vivato in-house counsel.

Russ August & Kabat — 12424 Wilshire Blvd., 12th Floor, Los Angeles, CA 90025

Caveats and sourcing gaps

• Full PACER docket not directly reviewed. The individual appearances (Forms G-123/G-64) in 21-01065 were not visible in the free docket extracts I could reach; my roster is built from (a) the case-opening docket entries showing Mirzaie as filing attorney, (b) the UniCourt "Plaintiff Attorneys" listing (Mirzaie, Wang, Chan, Fenster, Pickens, Conkle), and (c) signature blocks in the consolidated 8:17-cv-00596 filings and Federal Circuit briefs. CourtListener's RECAP page for 8:21-cv-01065 shows a docket last retrieved in June 2021, i.e., it does not reflect later appearances.
• No formal "lead counsel" designation exists on the C.D. Cal. docket; C.D. Cal. does not require one. The "lead" labels above reflect litigation/PTAB roles (Fenster as trial lead; Mirzaie as case and PTAB lead; Wang as designated PTAB lead in the '376 IPRs), not a court order.
• Nothing in this case was sealed on the counsel side; the settlement agreement referenced in related actions was confidential, but appearances were public.
• Post-2024 activity is in Texas, not this case. In XR's 2025 E.D. Tex. campaign (e.g., XR Commc'ns v. Spectrum Gulf Coast, 2:25-cv-01253), notices of appearance were filed by Minna Jay, James N. Pickens, and Paul Anthony Kroeger — Kroeger appears to be Texas local counsel for those new suits and has no role in the closed C.D. Cal. Ubiquiti matter. (PACER Monitor)
• Relevant context for the '376 patent: Ubiquiti's IPR2024-00148 seeking joinder with IPR2022-00613 was denied (June 2024) because the '613 proceeding had terminated; Vivato's counsel in that IPR were Reza Mirzaie and Philip Wang of RAK, against Simpson Thacher's Bo Jin. (PTAB decision, IPR2024-00148)

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

Bottom line

There is an important structural wrinkle: 8:21-cv-01065 has essentially no defendant-side record of its own. Ubiquiti was served on 6/21/2021 (Dkt. 17), but on 6/28/2021 Judge Carter consolidated the case into the earlier XR Communications v. D-Link Systems lead case, No. 8:17-cv-00596-DOC-JDEx, administratively closed 21-01065, and expressly ordered that "any party / counsel not listed on the low numbered case shall file a Notice of Appearance in that case" (Dkt. 18; case transferred to Judge Carter by Dkt. 16). So Ubiquiti's counsel of record for the '376 patent case appear in the 17-596 consolidated docket, not in 21-01065.

Ubiquiti's defense team came out of Simpson Thacher & Bartlett LLP's Palo Alto office — the same team that later filed Ubiquiti's IPR2024-00148 petition on the '376 patent.

Counsel of record for Ubiquiti Networks, Inc.

Firm-level note: No separate Los Angeles "local counsel" appears in the record I could locate — the C.D. Cal. does not require local counsel, and Simpson Thacher's Palo Alto team carried both the district-court and PTAB work. I found no in-house Ubiquiti attorney on the appearance record.

Sourcing and caveats (please read before citing)

• Docket entry numbers for the individual appearances are not verified. I could not pull the 21-01065 or 17-596 docket sheets from PACER directly in this session, and the aggregators I could reach (Justia, UniCourt, Docket Alarm, Unified Patents' "Final Civil Docket 06/28/2021") do not expose per-attorney ECF entry numbers for Ubiquiti's notices of appearance. The attribution above rests on (a) UniCourt's consolidated defendant-attorney list for 8:17-cv-00596, which includes Bo Jin and Jonathan C. Sanders, and (b) the PTAB filings, which independently identify Jin and Sanders as Simpson Thacher attorneys acting for Ubiquiti — not for any co-defendant.
• The 21-01065 docket itself is silent on defense counsel. Dkts. 1–18 are all plaintiff-side filings plus the court's transfer/consolidation orders. Nothing is sealed; there simply was never a defense appearance entered in 21-01065 before it was closed.
• Do not conflate co-defendants' counsel. The 17-596 docket is crowded: Covington & Burling (Robert T. Haslam, Kee Young Lee) for Aruba; Duane Morris (Sajid Saleem) for Belkin and Netgear; Perkins Coie (Sarah E. Piepmeier, Ryan Brodie Hawkins) for Cisco; Ropes & Gray (Daniel W. Richards, Andrew N. Thomases) for Extreme; Kasowitz Benson (Jonathan K. Waldrop, Marcus Barber, John W. Downing) for ASUS; Russ August & Kabat (Reza Mirzaie, Marc Fenster, Philip Wang, Minna Chan, Brian Ledahl, James Pickens) for plaintiff XR/Vivato.
• Role labels are inferred where the record is ambiguous. "Lead" for Jin is firm as to the PTAB proceeding (express designation); as to the district court it reflects his position atop the Simpson Thacher team rather than a verified C.D. Cal. "lead trial counsel" designation. A definite answer would require pulling the notice(s) of appearance in 8:17-cv-00596.

Verification steps if you need certitude

1. PACER: docket report for 8:17-cv-00596-DOC-JDEx, filter for "Notice of Appearance" / "Notice of Appearance or Withdrawal of Counsel (G-123)" naming Ubiquiti Networks, Inc. / Ubiquiti Inc.
2. C.D. Cal. CM/ECF attorney report for the case, which lists each attorney with "LEAD ATTORNEY / ATTORNEY TO BE NOTICED" flags.
3. Cross-check the Federal Circuit docket in 22-1785 (entries dated May–July 2022) for Ubiquiti's entry of appearance — note the clerk's 7/8/2022 revision reflecting Ubiquiti's non-participation in the '231 appeal.