Jackson Walker Obtains Summary Judgment of No Infringement for Roku in WDTX Patent Dispute

April 13, 2021 | Client Results

Jackson Walker attorneys Wasif Qureshi, Leisa Talbert Peschel, Blake T. Dietrich, and Chris Cravey obtained an order from U.S. District Judge Alan D. Albright granting Roku, Inc.’s motion for summary judgment of no infringement of U.S. Patent Nos. 9,451,294 and 9,420,349, both directed to Automatic Content Recognition (ACR) technologies.

In February 2019, ESW Holdings, Inc. filed suit against Roku asserting that Roku’s More Ways to Watch feature infringed the ’294 and ’349 patents. ESW also asserted three other patents, two of which Roku recently prevailed on at trial.

In January 2021, Roku filed a motion for summary judgment of no direct infringement as to the ’294 and ’349 patents, arguing that the accused More Ways to Watch system does not perform every step of the asserted method claims, that Roku neither directs nor controls Roku users to perform steps of the asserted method claims so as to be able to attribute the users’ actions to Roku, and that Roku does not control all the components of the asserted system claim. Leisa Talbert Peschel argued Roku’s motion before Judge Albright on March 2, 2021.

In the March 18, 2021 order granting Roku’s motion, Judge Albright agreed that Roku did not infringe the asserted method and systems claims of the ’294 and ’349 patents:

“Even assuming that Roku provides its users with instructions detailing how the users may activate the MWTW feature in an infringing manner, this Court finds the Eastern District’s Lone Star decision persuasive. In Lone Star, the court noted that if a plaintiff’s ‘allegations that a [defendant] instructs its customers to use the [accused product] in an infringing way, combined with some benefit achieved through infringement, were enough, every claim of induced infringement would also state a claim of divided infringement.’ Moreover, the problem is compounded by the fact that Roku includes instructions detailing how Roku TV users may disable the MWTW feature. Holding Roku liable based on the instructions provided in the Roku TV User Guide would be to hold that Roku both directs its users to perform the partially infringing steps while, at the same time, also directing its users to refrain from performing those same steps. For these reasons, the Court finds Lone Star is inapposite to the instant case and declines to expand the scope of divided infringement beyond what the Federal Circuit established in Akamai. Without any other basis for establishing that the Roku TV users’ performance of the steps of method claims 1, 7, and 15 are attributable to Roku, there is no genuine issue of material fact as to whether Roku infringes independent claims 1 or 15 of the ’294 patent or claim 7 of the ’349 patent, as well as those claims depending from them.

The most that ESW has offered to show that Roku directs and controls the actions of Roku TV users is Roku’s instructions detailed in the Roku TV User Guide. But merely providing instructions to users regarding how they may use an alleged infringer’s product does not suffice as direction and control. Thus, without any other basis for determining that Roku directs or controls its users to put the claimed system into operation, there is no genuine issue of material fact as to whether Roku directly infringed claim 11. Therefore, Roku is entitled to summary judgment of noninfringement of claim 11 of the ’294 patent.”

After Roku’s motion was granted, ESW voluntarily withdrew all claims alleging infringement of a third patent, U.S. Patent No. 8,682,945.

The case, ESW Holdings, Inc. v. Roku, Inc., Case No. 6:19-CV-00044, proceeded to a four-day in-person trial involving ESW’s claims of infringement as to two other patents asserted by ESW. On April 9, 2021, a six-person jury returned a verdict of no infringement on those two patents, invalidated the sole asserted claim in one of those patents, and awarded no damages in the $228 million trial. For more information about the trial, please visit “Jackson Walker Delivers Complete Defense Jury Verdict for Roku in $228 Million WDTX Patent Trial.”

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Founded in 1887, Jackson Walker continues to advance the world of business by helping companies of all sizes navigate today’s increasingly complex, interconnected legal landscape. With more than 400 attorneys across seven offices, we are the fourth-largest law firm in the state and have been recognized by Law360 as a “Texas Powerhouse” and an “elite law firm” that regularly provides counsel to industry-leading clients on highly complex transactions. To explore the Firm’s experience enforcing and defending intellectual property rights in federal and state courts, arbitrations, alternative dispute forums, and proceedings before the International Trade Commission and the Patent Trial and Appeal Board, visit our Intellectual Property Litigation practice page.

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