Earlier this year, RPX noted the transfer of eight US patents from DCX US Agility Platform LLC, a subsidiary of DXC Technology, to VideoLabs, Inc., which is in active litigation over earlier-collected patents, from multiple operating companies. Last month, portfolios of additional patents moving to VideoLabs appeared in publicly available USPTO records, from three new sources: OLogN Technologies AG (in May 2024), PRJ Holding Company LLC (in July), and ZING Communications Inc. (in July as well). Meanwhile, VideoLabs and its subsidiary VL Collective IP, LLC have sued Hisense, together with myriad subsidiaries (2:24-cv-00904), over the provision of streaming products (e.g., dongles, projectors, set-top boxes, and TVs) that support the H.264 compression standard and/or are compatible with High-Bandwidth Digital Content Protection (HDCP), including certain Roku-series software products.

Last month’s review of notable patent assignments considered the movement of assets from Avaya to Dominion Harbor Enterprises, LLC; from Level 3 Communications to Sandpiper CDN, LLC; from Seiko Epson to IPValue’s 138 East LCD Advancements Ltd. and Lumitek Display Technology Ltd.; from Transaction Security to a “BioCrypt Access”; from Fortress Investment Group LLC’s KIP Prod P1 LP to Prodea Automation LLC; from EMM Patents Ltd. to Empire IP LLC; from Siemens and Abdelsalam Helal to Rokiot USA LLC; and from Proxicom Wireless, LLC to Secure Communication Technologies, LLC. While a couple of these entities again feature prominently, this month’s review extends well beyond them to cover the movement of patents away from other operating companies, as well as within several repeat monetization players.

Earlier this month, NovaCloud Licensing LLC announced the launch of “a new licensing effort to provide more accessibility to patented technologies that are fundamental to driving innovations across the cloud computing and datacenter sectors”. The firm indicated in its press release that it has acquired “a foundational patent portfolio of cloud-based technologies” from Ericsson, which NovaCloud’s public website suggests has global reach, including 40 patent families and more than 40 US patents. Joe Chernesky and Bill Goldman, both behind VideoLabs, Inc., lead the NovaCloud team.

After a loss before the International Trade Commission (ITC), VideoLabs, Inc. has returned to a Western District of Texas case stayed before Judge Alan D. Albright to try again, under what it argues are changed factual circumstances. In a motion to the lift the stay and begin trial court proceedings, the plaintiff argues that ITC findings are not binding on district courts and that “a change in ownership of family member patents and the filing of terminal disclaimers” undermines the ITC’s determination that two of its asserted patents are invalid for obviousness-type double patenting. Defendant HP opposes this broader request and seeks a modification of the stay, one that solely permits the court’s consideration of “early dispositive motions on invalidity”.

In addition to the announced divestiture of a large tranche of VoIP patents from Avaya to Dominion Harbor Enterprises, LLC, March 2024 saw several other operating companies—including DXC Technology, Huawei, and SOLiD—unload patent assets. Several NPE enterprises also moved patents around, internally or to other NPEs, seemingly in preparation for new assertion campaigns.

Patent transfers recently made public by the USPTO include multiple assignments between NPEs, several of which have litigated previously received assets, but others of which are new and have yet to file suit. They also include a grant to the US Treasury Department of four assets, one of which was “litigated” through this past July, when Western District of Texas Judge Alan D. Albright, on the court’s own motion, brought the campaign to an end.

VideoLabs, Inc. and its subsidiary VL Collective IP, LLC have added a case against Roku (1:23-cv-01136) to its sole litigation campaign. In the District of Delaware complaint, Roku is targeted with six patents, one of which is new to the campaign, over its provision of a wide array of streaming hardware and software products. At issue are features ranging from content programming to compliance with the HDCP copy-protection scheme. The new complaint drops roughly four weeks after Western District of Texas Judge Alan D. Albright postponed trial in the first case filed in this campaign, against Dell, from October 2023 to January 2024.

Buried in the recent activity in the VideoLabs, Inc. campaign is a months-long stall in Delaware cases filed against Meta Platforms and Netflix. Those suits were assigned to Eastern District of Pennsylvania Judge Joel H. Slomsky, sitting by designation in Delaware as Leonard P. Stark was elevated to the Federal Circuit and Gregory B. Williams joined the court in his place. Judge Slomsky held a hearing in February 2023 related to Alice motions that were pending upon reassignment, took the matters under advisement, and has yet to rule. That same sequence has also stalled litigation filed by BNP Holdings LLC against Intuit, that pause to await an Alice ruling in place since November 2022.

VideoLabs, Inc. has filed additional Western District of Texas cases, one against each of ASUSTek (6:23-cv-00640) and HP (6:23-cv-00641). The plaintiff alleges infringement—of four patents by ASUSTek and two by HP—through the provision of products that incorporate certain touch screen displays, control voltage output, are compliant with the H.264 streaming standard, and/or support High-Bandwidth Digital Content Protection (HDCP). The new cases drop as separate International Trade Commission (ITC) investigations against the same two respondents have run into trouble and as the first district court cases in this campaign, now consolidated before Western District of Texas Judge Alan D. Albright, head toward an October 2023 trial.

BlackBerry’s sale of 32,000 patent assets to a Key Patent Innovations Limited sub this month has dominated discussion around patent divestures to NPEs. However, in the background, a number of smaller transactions involving operating company patents have recently come to light, some notable by virtue of their new owner’s ties to third-party litigation funding. At least one of those transactions has already resulted in new NPE litigation.