Willkie Invalidates Two Patents on Behalf of Netflix

October 29, 2024

Willkie recently secured a complete victory for Netflix, Inc. invalidating US Patent Nos. 7,233,790 and 7,440,559 owned by VideoLabs, Inc. at the Patent Trial and Appeal Board (PTAB). Partner Aliza George Carrano argued Netflix's case for both patents before a three-judge PTAB panel at the United States Patent and Trademark Office headquarters in Alexandria, Virginia.

VideoLabs sued Netflix in 2022 in the District of Delaware for allegedly infringing four patents that VideoLabs contends is practiced by various aspects of Netflix's streaming platform including the provisioning of content, content delivery, encoding, and synchronizing different forms of media.

The Willkie team swiftly responded by filing separate inter partes review (IPR) actions at the PTAB challenging the validity of three of the four asserted patents. After reviewing Netflix's IPR petitions, the PTAB determined that there was a reasonable likelihood that Netflix would prevail on at least one of the claims challenged in each patent and instituted all three IPR proceedings. With the IPRs going forward, Willkie moved to stay the district court litigation, which the court granted.

In the recently issued Final Written Decisions, the PTAB agreed with Netflix on every issue for every claim for each invalidity ground. Accordingly, the PTAB found that all 14 claims of the '790 patent and all 24 claims of the '559 patent were unpatentable.

The hearing for the third IPR took place on October 10, 2024.

The Willkie team was led by partner Aliza George Carrano and included associate Dane Sowers.

VideoLabs, Inc. v. Netflix Inc., Case 1:22-cv-00229, D. Del., Judges Connolly, Slomsky

Netflix Inc. v. VideoLabs, Inc., IPR2023-00628, -00630, PTAB, Judges Smith, White, Belisle

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