Ropes & Gray secured an extremely favorable settlement on behalf of Roku, Inc. and TCL Electronics Holdings Ltd. (and related entities) in a five-patent lawsuit filed by Canon, Inc. in the Eastern District of Texas that targeted all of TCL’s Roku TVs, which have become the top selling TV brand in North America.
On behalf of Roku and TCL, Ropes & Gray initiated an aggressive, multi-pronged defense in district court, which Ropes & Gray supplemented by filing seven inter partes review challenges before the Patent Trial and Appeal Board (PTAB), a mandamus petition to the U.S. Court of Appeal for the Federal Circuit, and miscellaneous actions in the Northern District of California. These efforts resulted in Canon abandoning its case shortly before the close of fact discovery.
In the fast-paced Eastern District of Texas proceedings, Ropes & Gray obtained a favorable Markman claim construction order, limiting Canon’s ability to support infringement positions with respect to all of the accused TCL Roku TVs. Among other things, Ropes & Gray successfully argued that numerous terms that did not recite the term “means” should nonetheless be construed as means-plus-function terms under a statute severely limiting the scope of the claims.
Ropes & Gray also filed seven petitions for inter partes review before the PTAB, challenging the validity of all patents and claims that Canon asserted in the district court proceeding. The PTAB also granted Roku’s request to file replies to Canon’s preliminary responses to those petitions, to address Canon’s arguments that the petitions should be denied on discretionary grounds.
On behalf of TCL, Ropes & Gray also filed a mandamus petition with the Court of Appeals for the Federal Circuit, challenging the district court’s denial of TCL’s motion to transfer venue for convenience to the Northern District of California. One day after TCL filed the mandamus action, the Federal Circuit took the uncommon step of ordering Canon to respond to TCL’s petition within seven days, demonstrating the Federal Circuit’s interest in the issues raised in the petition.
In addition, on behalf of Roku, Ropes & Gray also challenged, in the Northern District of California, Canon’s demand that Roku make available for review and inspection by remote means all of the source code for Roku’s proprietary operating system—which Roku considers to be its most valuable and core asset. That motion garnered significant attention and interest: Hulu took the unusual step of filing an amicus brief to support Roku’s motion to quash, and several legal publications reported on the dispute. Ropes & Gray’s strategy resulted in Roku not having to make its source code available for remote review and inspection.
The district court team included IP litigation partners Andrew Thomases and Andrew Radsch (both of Silicon Valley), IP litigation counsel Han Xu (Tokyo), and IP litigation associates Scott Taylor (Boston) and Lance Shapiro; the IPR team included IP litigation associate Christopher Bonny (Silicon Valley); and the Federal Circuit mandamus team included appellate litigation partner Douglas Hallward-Driemeier (Washington, DC), IP litigation counsel Samuel Brenner (Boston), and IP litigation associate Kathryn Thornton (Washington, DC).
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