More than seven years after the close of its last case, Robocast, Inc. has revived litigation over a family of patents generally related to "automating the presentation of computer content". The prior defendants were Microsoft (case running from 2010 to 2014) and Apple (from 2011-2014), the plaintiff now asserting the same patent, as well as two related others, against Alphabet (Google, YouTube) ( 1:22-cv-00304) and Netflix ( 1:22-cv-00305), targeting their respective "video hosting Internet platform[s]".
Robocast's asserted patents (7,155,451; 8,606,819; 8,965,932) issued in a family of five with grant dates ranging from December 2006 through February 2015 and earliest estimated priority date, through both a continuation-in-part and an earlier provisional application, in September 1996. In the prior litigation, Robocast argued for an even earlier invention date, relying on "inventor testimony, as corroborated by a notebook entry dated January 4, 1995 and a letter dated June 14, 1996" (documents the authenticity of which Microsoft contested). Delaware District Judge Richard G. Andrews turned back two related Microsoft motions, ruling that a reasonable jury could find that Robocast both is entitled to claim priority back to earlier applications and has shown prior invention. The asserted patents appear to have now expired.
The patents' named inventor is Damon Torres, who identifies himself on social media as having been the chairman and CEO of Robocast since 1997 (as well as having been the president of Interactive Media Universe, LLC, billed as "an intellectual property holding company that is relaunching Robocast Inc. Our work involves building strategic alliances, fundraising, managing professional services, and R&D"). In the Microsoft litigation, Judge Andrews also denied two motions for summary judgment from the defendants: one for inequitable conduct based on infectious unenforceability ported from an alleged false declaration from Torres attempting to swear behind a reference cited against the claims of the first nonprovisional application in the family (later abandoned); and another for unenforceability via unclean hands in light of documents purportedly forged to get the earlier invention date mentioned above. Although Judge Andrews embraced a view that "inequitable conduct infects the invention itself", the court ruled that the application of infectious unenforceability is "best left for trial, where the facts can be more clearly developed". He also indicated that any attempted reliance by Robocast on documents that it knows to have been forged would constitute misconduct that could render the patent there in suit (the '451 patent) unenforceable on independent grounds.
Judge Andrews handed several other notable orders in the course of the concurrent cases against Apple and Microsoft, including one construing disputed claim terms, another striking the basis for the expert report on Robocast's alleged damages and therefore that report (leaving Robocast with no expert testimony at all on the issue of damages), and yet another disagreeing with a special master's recommendation to impose an adverse inference on Microsoft (over some source code that appears to have disappeared). Robocast and Microsoft filed a notice of settlement in March 2014, leading to a dismissal with prejudice on the eve of trial. (Microsoft filed an affirmative case against Robocast in 2013-2014; it ended with the settlement as well.) A few months later, the Apple case was also dismissed with prejudice after a stay to finalize "an agreement in principle to resolve the case" had been extended multiple times.
Robocast's new complaints plead defensively against an Alice challenge, arguing that its patents-in-suit are "directed to providing a specific and unconventional technological solution, necessarily rooted in computer technology, to a known technological problem that existed with respect to Internet web browsing as it was then being practiced by computer users in the early 1990s time frame". The plaintiff identifies the problem purportedly solved by its patents was "that computer users browsing the Internet had no easy and efficient means available for accessing, retrieving, and consuming content from a multitude of different Internet-accessible resources".
The plaintiff also pleads notice as to Netflix through, among other things, the fact that "Netflix founder, chairman, and CEO Reed Hastings served on the Microsoft board from 2007-2012, during which time the Microsoft case was pending" before it "concluded in April 2014, resulting in Microsoft licensing each of the Patents-in-Suit". It pleads notice to Google and YouTube via, among other things, the fact that "YouTube has been asserting and relying upon the Patents-in-Suit as allegedly being invalidating prior art in connection with efforts to defend itself against charges of patent infringement in the case of Virentem Ventures, LLC v. YouTube, LLC, et al., C.A. No. 1:18-cv-00917-MN (D. Del.)". To dive into that campaign, which also hit TiVo, see RPX Insight here. Bayard PA filed the new complaints on Robocast's behalf. Bayard, along with Foley & Lardner LLP and Morris Nichols Arsht & Tunnell LLP, represented Robocast in the prior cases. Both new suits have been initially assigned to Judge Andrews. 3/7, District of Delaware.
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