Virentem Ventures LLC (d/b/a Enounce) has sued TiVo and parent company Xperi Holding Corporation (1:20-cv-00787) over the provision of TiVo video systems offering two features: QuickMode, which allows users to play videos back at faster than normal speed with pitch-corrected audio; and SkipMode, which allows users to skip commercials and automatically distinguishes that content from show content. The plaintiff's first suit, filed against Alphabet (Google, YouTube) in June 2018, has hit a few snags, including a stay in the district court in light of trials instituted by the PTAB to review nine of the 11 patents asserted there, as well as a claim construction order from Judge Maryellen Noreika in the District of Delaware-a key aspect of which Enounce quickly asked the court to reconsider.

The patents-in-campaign originated with another entity, Enounce, Inc., a startup offering video playback software that ceased operations in 2015 and was subsequently acquired by Virentem Ventures. The former was cofounded by Donald J. Hejna, Jr., who acted as its CEO and who is a named inventor on most of the entity's patents. Hejna holds himself out as a managing partner and founder of Kestros Capital, as well as having been the managing member for Virentem since April 2010, when that entity was formed in Delaware. The complaint pleads that Hejna's MIT Master's thesis resulted in an issued patent (5,175,769) incorporated by reference into many of the patents-in-campaign.

Enounce accuses TiVo of infringing a single patent (6,374,225) that is not in suit against Google and YouTube. The '225 patent generally relates to modifying the time scale of a portion of audio or audiovisual content and playing back that portion. It issued in April 2002 as the earliest member of family now having 11 patents, four of which (6,801,888; 7,043,433; 7,299,184; 9,185,380) Enounce is litigating in the prior case. On June 21, 2019, Google filed 13 petitions for inter partes review (IPR) of nine of the patents asserted against it, with the PTAB instituting trials (early in 2020) as to the patentability of all nine, if not in response to all 13 petitions, including trials arising from petitions challenging the '433 and '380 patent. (No petitions for IPR targeting the '888 patent or the '184 patent were filed.)

In early March, Judge Noreika imposed a stay to await the outcomes of those proceedings, a move that Enounce did not oppose, but not before the court handed down an order, in December 2019, resolving multiple disputes over the meaning of terms from the patents-in-suit. Later that month, Enounce moved the court for reconsideration of its construction for "time-scale modification", which the court ruled means "speeding up or slowing down the playback rate". Enounce asserts that the court "erred as a matter of law" in issuing this construction, arguing that the intrinsic record requires any construction to include language indicating that "perceived pitch and intelligibility" in the speed-altered video are "preserved", that Google agreed that a person of ordinary skill in the relevant art at the time of alleged invention would have understood this requirement, and that the court should not consider statements made by counsel in prior litigation "determinative here as a matter of law": "Put simply, the intrinsic evidence supports the only understanding of one of ordinary skill in the art-that time-scale modification is more complex than simply speeding up or slowing down, and that the goal of TSM is to do so in a way which preserves pitch and intelligibility".

The '769 patent was asserted by EPL Holdings, LLC, together with three other patents, against Apple in a Northern District of California case lasting from August 2012 to December 2014. The plaintiff accused Apple of infringement through the provision of certain iPhones, iPod Touches, iPads, MacBooks, and iMacs. EPL characterized Enounce as its predecessor-in-interest in that case, identifying Enounce in a certificate of interested parties as its corporate parent. In that certificate and a later amended version, EPL also identified RealNetworks (as having a minority interest in Enounce), IP Navigation Group, LLC (d/b/a IPNav) (as an advisor), SNR Denton US, LLP (as original litigation counsel, subsequently replaced), and Russ, August & Kabat (later counsel) as having an interest in the outcome of the proceeding. The court sustained Apple's objection to IPNav's review of confidential discovery produced in the case, and after a February 2014 claim construction order in which the court five times adopted Apple's proposed construction, either directly or in modified version, and twice adopted EPL's proposed construction, litigation came to standstill, leading to a December 2014 settlement and dismissal.

In its motion for reconsideration of the construction of "time-scale modification", Enounce acknowledges that "the Court appeared to place great weight on statements EPL made in the prior litigation" and that "[w]ithout question, some of the arguments made by EPL's counsel are not helpful to Virentem here". However, the plaintiff characterized those arguments as "based on a misguided concern about a potential noninfringement argument" that, even if "hard to reconcile" or even "wrong as a matter of law", the court should not consider them determinative because "it is improper to base the claim construction of time-scale modification in this case on a few select statements made in support of legal arguments by prior counsel in prior litigation" (emphasis in original).

On June 9, Judge Noreika denied Enounce's motion for reconsideration without prejudice to refiling later, after the stay is lifted, noting that statements made during PTAB proceedings are also relevant to claim construction.

Xperi Holding Corporation announced on June 1, 2020 that it had completed the $3B merger of Xperi Corporation and TiVo, "forming a unique digital entertainment technology platform and one of the industry's largest and most diverse intellectual property (IP) licensing platforms". Details are reported here. 6/9, District of Delaware.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.