DCT

6:22-cv-00720

VideoLabs Inc v. ASUSTeK Computer Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:22-cv-00720, W.D. Tex., 11/02/2023
  • Venue Allegations: Venue is alleged to be proper on the basis that the defendant is not a resident of the United States.
  • Core Dispute: Plaintiff alleges that Defendant’s servers, computers, tablets, and smartphones infringe seven patents related to video coding methods, hardware performance monitoring, portable device construction, and conditional access for digital content.
  • Technical Context: The asserted technologies cover fundamental aspects of modern electronics, including efficient video compression, dynamic hardware power management, and secure content delivery, which are critical for streaming, mobile computing, and content protection.
  • Key Procedural History: The complaint alleges a history of licensing negotiations beginning in March 2021, followed by multiple notices of infringement provided to the defendant between September 2021 and May 2023. The complaint notes that U.S. Patent No. 7,970,059 expired in April 2023 and that U.S. Patent No. 7,769,238 was terminally disclaimed in July 2023, which may limit the scope of recoverable damages for those patents.

Case Timeline

Date Event
2002-04-15 Priority Date for ’238, ’878, ’542 Patents
2002-04-26 Priority Date for ’059 Patent
2003-02-26 Priority Date for ’535 Patent
2004-12-07 Priority Date for ’236 Patent
2006-01-20 Priority Date for ’027 Patent
2007-05-15 ’027 Patent Issued
2009-04-28 ’535 Patent Issued
2010-08-03 ’238 Patent Issued
2011-06-28 ’059 Patent Issued
2012-03-20 ’878 Patent Issued
2012-06-26 ’542 Patent Issued
2012-10-16 ’236 Patent Issued
2021-03-01 Plaintiff allegedly first contacted Defendant for licensing negotiations
2021-09-22 Plaintiff allegedly sent claim charts for ’238, ’878, ’535, ’059 Patents
2022-04-14 Plaintiff allegedly sent notice letter for ’238, ’878, ’535, ’059 Patents
2022-06-30 Original Complaint filed, providing notice for ’238, ’878, ’542 Patents
2023-04-16 ’059 Patent Expired
2023-05-17 Plaintiff allegedly provided notice for ’027, ’535, ’236 Patents
2023-07-06 ’238 Patent Terminally Disclaimed
2023-11-02 Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,769,238 - Picture Coding Method and Picture Decoding Method

  • Issued: August 3, 2010 (the “’238 Patent”)

The Invention Explained

  • Problem Addressed: The patent addresses the inefficiency of conventional video coding methods that use only a single, fixed Variable Length Coding (VLC) table for both intra-prediction and inter-prediction coding, which can result in poor compression performance depending on the quality and type of picture being coded (’238 Patent, col. 1:40-45).
  • The Patented Solution: The invention proposes a method to improve coding efficiency by adaptively selecting the most suitable coding table for a given block of picture data. It calculates a "predictive value" based on the number of non-zero coefficients in previously coded neighboring blocks and uses this value to select an optimal table from a plurality of available tables for coding the current block (’238 Patent, col. 2:5-13).
  • Technical Importance: This adaptive approach allows a video codec to dynamically adjust its compression strategy to match the characteristics of the video content, improving efficiency across a wide range of bitrates and content types.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶23).
  • Essential elements of claim 1 (a picture coding method) include:
    • A predicting step for calculating a predictive value of the number of non-zero coefficients in a current block based on the number of non-zero coefficients in previously coded blocks on its periphery.
    • A table selecting step for selecting tables for variable length coding based on the calculated predictive value.
    • A variable length coding step for performing coding on the number of non-zero coefficients in the current block using the selected tables.
  • The complaint alleges infringement of all claims of the patent (Compl. ¶22).

U.S. Patent No. 8,139,878 - Picture Coding Method and Picture Decoding Method

  • Issued: March 20, 2012 (the “’878 Patent”)

The Invention Explained

  • Problem Addressed: Similar to the ’238 Patent, the ’878 Patent addresses the inefficiency inherent in using a single, static table for decoding variable length coded video data, which may not be optimal for different types of picture content (’878 Patent, col. 1:40-45).
  • The Patented Solution: The invention describes a picture decoding method that mirrors the adaptive coding method of the ’238 Patent. The decoder calculates a predictive value based on the number of coefficients in already decoded neighboring blocks and uses this value to select the corresponding table that was used during encoding. This allows the decoder to correctly interpret the variable length codes for the current block’s coefficients (’878 Patent, col. 4:3-13).
  • Technical Importance: This technology enables decoders to correctly and efficiently process video streams that were compressed using adaptive, multi-table coding techniques, ensuring compatibility and performance.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶30).
  • Essential elements of claim 1 (a picture decoding method) include:
    • A predicting step for calculating a predictive value based on the number of non-zero coefficients in decoded blocks on the periphery of a current block.
    • A table selecting step for selecting tables for variable length decoding based on the predictive value.
    • A variable length decoding step that performs decoding on a variable length code for the number of non-zero coefficients in the current block, using the selected tables.
  • The complaint alleges infringement of all claims of the patent (Compl. ¶29).

U.S. Patent No. 8,208,542 - Moving Picture Coding Method and Moving Picture Decoding Method

  • Issued: June 26, 2012 (the “’542 Patent”)
  • Technology Synopsis: The ’542 Patent discloses methods for coding and decoding moving pictures that involve selecting between different prediction modes. The invention describes techniques for bi-directional prediction where motion vectors are derived based on reference pictures, aiming to enhance compression efficiency for video sequences with complex motion.
  • Asserted Claims: At least independent claim 1 (Compl. ¶37).
  • Accused Features: The complaint alleges that the Accused Products infringe by performing video coding and decoding, for example, when taking or recording certain types of video (Compl. ¶38).

U.S. Patent No. 7,219,027 - Operation Monitor Device for Hardware Component

  • Issued: May 15, 2007 (the “’027 Patent”)
  • Technology Synopsis: This patent addresses the problem of manually adjusting hardware operating parameters like clock frequency to optimize performance, which can be complex and error-prone (’027 Patent, col. 1:50-59). The invention provides a device that automatically monitors the load current of a hardware component (e.g., a GPU) and dynamically adjusts its operating voltage via a pulse width modulation (PWM) module, thereby improving performance to meet execution demands without manual intervention (’027 Patent, col. 2:30-51).
  • Asserted Claims: At least independent claim 1 (Compl. ¶44).
  • Accused Features: The complaint accuses the use of the central processing unit (CPU) and/or graphics processing unit (GPU) in the Accused Products (Compl. ¶45).

U.S. Patent No. 7,525,535 - Portable Terminal

  • Issued: April 28, 2009 (the “’535 Patent”)
  • Technology Synopsis: The patent addresses design limitations in portable devices where a touch pad is exposed to the outside through an opening in the device body, creating an unattractive appearance and allowing ingress of foreign materials like dust or water (’535 Patent, col. 1:46-51). The invention proposes a portable terminal with a body having an integrally formed transparent window and a capacitive touch screen disposed underneath the body, between the display and the window, thereby creating an uninterrupted front surface that is more robust and aesthetically pleasing (’535 Patent, col. 1:55-66).
  • Asserted Claims: At least independent claim 5 (Compl. ¶51).
  • Accused Features: The complaint targets the use of the touch screen in the Accused Products (Compl. ¶52).

U.S. Patent No. 7,970,059 - Variable Length Coding Method and Variable Length Decoding Method

  • Issued: June 28, 2011 (the “’059 Patent”)
  • Technology Synopsis: This patent describes a method to improve the efficiency of arithmetic coding for video data. The invention involves scanning coefficient values and performing arithmetic coding on their absolute values by switching between different probability tables. The key innovation is that the system switches to a new probability table in a single direction (e.g., from a table for smaller values to one for larger values) when a coefficient’s absolute value exceeds a predetermined threshold, and does not switch back, which improves adaptation to trends in coefficient magnitudes (’059 Patent, col. 2:32-51).
  • Asserted Claims: At least independent claim 3 (Compl. ¶58).
  • Accused Features: The complaint accuses the functionality used to "play certain types of video" (Compl. ¶59).

U.S. Patent No. 8,291,236 - Methods and Apparatuses For Secondary Conditional Access Server

  • Issued: October 16, 2012 (the “’236 Patent”)
  • Technology Synopsis: The invention relates to conditional access (CA) systems for managing access to media content in a networked environment. It describes a secondary CA server that acts as a bridge between a primary security system (e.g., a broadcast network) and secondary clients (e.g., storage or rendering devices on a home network). The server can recover entitlement data and decryption keys from the primary system and enforce access rights for the secondary clients, enabling features like secure recording and playback of protected content (’236 Patent, Abstract).
  • Asserted Claims: At least independent claim 130 (Compl. ¶65).
  • Accused Features: The complaint targets the use of High-Bandwidth Digital Content Protection (HDCP) functionality in the Accused Products (Compl. ¶66).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are a broad category of products including, without limitation, servers, desktop computers, laptop computers, tablet computers, and smartphones made, used, or sold by Defendant Asus (Compl. ¶1).

Functionality and Market Context

  • The complaint alleges that these products incorporate functionalities directly relevant to the asserted patents, including video coding/decoding capabilities, hardware components like CPUs and GPUs that are actively monitored and managed, touch screens for user input, and content protection technologies such as HDCP (Compl. ¶24, 45, 52, 66). The complaint does not provide further technical detail on the specific operation of these features but asserts that they are used in a manner that infringes the patents-in-suit. The complaint does not provide specific allegations regarding the products' commercial importance beyond their general categorization. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references, but does not include, claim chart exhibits that detail its infringement allegations (Compl. ¶23, 30). In the absence of these exhibits, the infringement theory is summarized below in prose.

  • ’238 Patent and ’878 Patent Infringement Allegations
    The complaint alleges that the Accused Products directly infringe at least claim 1 of the ’238 Patent (a picture coding method) and at least claim 1 of the ’878 Patent (a picture decoding method) (Compl. ¶23, 30). The narrative theory suggests that when the Accused Products encode or decode video streams, their processors execute steps that practice the claimed methods. This allegedly includes calculating a predictive value based on data from neighboring blocks and using that value to adaptively select a specific table from a plurality of tables to perform variable length coding or decoding for the current block's coefficients (Compl. ¶24, 31).

  • Identified Points of Contention:

    • Technical Questions: A primary technical question will be whether the specific algorithms implemented in the Accused Products (e.g., as part of standard codecs like H.264/AVC or H.265/HEVC) perform the exact steps of calculating a "predictive value" and "selecting" a table in the manner required by the claims. The complaint does not specify how the accused functionality maps to these claim elements.
    • Scope Questions: The infringement analysis may raise the question of whether the term "predictive value," as defined and used in the patents, can be construed to read on the predictive mechanisms used in the accused industry-standard codecs. Similarly, the scope of "table selecting step" will be a central issue—does it cover any algorithmic choice of coding parameters, or is it limited to the specific threshold-based table-switching embodiments described in the patent specifications?

V. Key Claim Terms for Construction

  • The Term: "predictive value" (from ’238 Patent, claim 1; ’878 Patent, claim 1)

  • Context and Importance: The calculation and use of this "predictive value" is the core of the claimed adaptive coding and decoding method. The outcome of the case may depend on whether the defendant's method for adapting its coding/decoding parameters is found to be equivalent to calculating and using the claimed "predictive value."

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language states the value is "based on the numbers of coefficients," which could suggest that any calculation method using this input, not just a specific one, falls within the claim’s scope (’238 Patent, col. 16:1-5).
    • Evidence for a Narrower Interpretation: The specification repeatedly describes a specific embodiment where the predictive value is calculated "using an average value of the numbers of the coefficients" from neighboring blocks (’238 Patent, col. 2:16-18). A party could argue that this description limits the term to this specific calculation.

  • The Term: "table selecting step" (from ’238 Patent, claim 1; ’878 Patent, claim 1)

  • Context and Importance: This term defines the mechanism by which the invention achieves its adaptive functionality. Practitioners may focus on this term because the dispute will likely involve whether the accused products' process for choosing coding or decoding parameters constitutes the claimed "selecting" from a plurality of tables.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim requires "selecting tables for variable length coding based on the predictive value," without specifying the mechanism. This could be interpreted broadly to cover various forms of algorithmic decision-making that use the predictive value as an input (’238 Patent, col. 16:6-8).
    • Evidence for a Narrower Interpretation: The detailed description provides examples of selecting from a set of predefined VLC tables based on whether the predictive value falls within certain numerical ranges (’238 Patent, col. 10, Chart 5). This could support an argument that the term is limited to a lookup from a predefined set of tables rather than a more dynamic or algorithmic generation of coding parameters.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all seven asserted patents. Inducement is primarily based on allegations that Defendant provides manuals and other materials instructing customers on how to use the infringing functionalities, such as playing video, using the GPU, or operating the touch screen (Compl. ¶24, 31, 45, 52, 59, 66). Contributory infringement is based on the allegation that the Accused Products are not staple articles of commerce and are "especially made or adapted to practice the Asserted Claims" (Compl. ¶24).
  • Willful Infringement: Willfulness is alleged based on Defendant's purported pre-suit knowledge of the asserted patents and its infringement. The complaint details a timeline of notice, including initial contact for licensing in March 2021, the provision of claim charts in September 2021, a formal notice letter in April 2022, and the filing of the original complaint in June 2022 (Compl. ¶13-17). The plaintiff requests a finding of willful infringement and an award of treble damages (Compl. p. 16, Prayer for Relief ¶D).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of technical mapping: can the plaintiff provide sufficient evidence to demonstrate that the accused products—which likely implement industry-standard technologies—perform the specific, and in some cases unconventional, multi-step methods recited in the asserted claims? For instance, does an Asus smartphone's video decoder actually calculate a "predictive value" based on neighboring block coefficients to "select" a decoding table, or does it use a different, non-infringing optimization method?
  • The case will also likely turn on claim construction: how will key terms that appear foundational but are described with specific embodiments, such as "predictive value" in the video coding patents or the "integrally formed" window in the portable terminal patent, be defined? A narrow construction limited to the patents' examples may favor the defendant, while a broader construction could encompass a wider range of modern technologies.
  • A third key question will be damages and apportionment: given the assertion of seven patents covering disparate technologies against a wide array of complex, multi-functional products, a significant challenge will be to establish a reasonable royalty. The analysis will need to isolate the value of the allegedly infringing features from the myriad other non-infringing features that drive the products' value.