IP Law Daily, PATENT—W.D. Tex.: Flexiworld Technologies had standing to pursue infringement suit against Roku, (Jun 9, 2022)

By Kevin M. Finson, J.D.

Flexiworld was able to establish standing to bring a patent infringement suit because the patentee was, based on the interpretation of an assignment contract, the sole owner of the patent rights.

Flexiword Technologies—owner of three patents relating to digital content display—had standing to support a patent infringement suit against Roku, the federal district court in Waco, Texas, has held. Flexiworld had not implicitly assigned the asserted patent rights to Samsung Electronics Company (Flexiworld Technologies, Inc. v. Roku, Inc., June 6, 2022, Albright, A.).

Flexiworld Technologies, Inc. (Flexiworld) was the purported owner of U.S. Patents Nos. 8,989,064 (the ’064 patent), 10,346,114 (the ’114 patent), and 10,740,066 (the ’066 patent) (collectively, “the patents-in-suit”), each of which related to wireless devices allowing televisions to display digital content. Flexiworld brought suit against Roku, Inc. (Roku), alleging that the Roku product infringed all three patents.

Roku moved to dismiss with regard to the ’064 and ’066 patents, arguing that Flexiworld lacked standing to bring suit because it was not in fact the sole owner of the patent rights and that those rights had been assigned to Samsung Electronics Co. Ltd. (Samsung). The court interpreted the contract between Flexiworld and Samsung, applying Washington law pursuant to its choice of law provision.

Assignment. In November of 2012, Flexiworld assigned U.S. Patent No. 7,941,541(the ’541 Patent), U.S. Patent Application No. 13/103,958 (the ’958 Application), a continuation application, and a second continuation application to Samsung. Roku argued that the patents-in-suit were assigned to Samsung because they are related to the ’541 Patent and ’958 Application. Roku argued that the plain language of the statute controlled, while Flexiworld argued that in the context of extrinsic evidence it was clear that this language was much more limited and did not include the patents at issue in this case.

The court explained that under Washington Law it was proper for a court to examine extrinsic evidence to give meaning to the specific words and terms used, but not to show an intention independent of the instrument. After reviewing letters and other extrinsic documents related to the transaction between Flexiworld and Samsung, the court determined that the parties clearly did not intend to transfer the rights to the patents-in-suit in this case.

Finding that Flexiworld was the sole owner of the asserted patents, the court held that Flexiworld had standing to bring suit for infringement and denied the motion to dismiss.

The Case is No 6:20-cv-00819-ADA.

Attorneys: Jennifer L. Truelove (McKool Smith PC) for Flexiworld Technologies, Inc. Cory Owan (Perkins Coie LLP) for Roku Inc.

Companies: Flexiworld Technologies, Inc.; Roku Inc.; Samsung Electronics Co. Ltd.

Cases: Patent TexasNews