After the Patent Trial and Appeal Board denies five Google IPRs, Robocast achieves an 8 for 8 success rate
NEW YORK–(BUSINESS WIRE)–Robocast Inc., a leading innovator in playlist technology, announced today that it has successfully defended its U.S. Patent No. 7,155,451 B1 (the “‘451 Patent”), U.S. Patent No. 8,606,819 B2 (the “819 Patent”) and U.S. Patent No. 8,965,932 B2 (the “932 Patent”) against five inter partes review (IPR) challenges filed by Google and YouTube before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).
The PTAB issued five decisions on September 18, 2023, denying institution of inter partes review of all 141 claims of the three patents challenged in the five IPRs, which cover methods and systems for automated browsing of media content. The PTAB found that Google and YouTube failed to demonstrate that they were reasonably likely to prevail in proving that any of the challenged claims were unpatentable over the prior art relied on by Google and YouTube.
These decisions strengthen Robocast’s patent position in the playlist technology space. Google and YouTube join Netflix and Unified Patents in having institution denied in each of their IPRs. All together, the PTAB denied institution on the merits of all eight IPR challenges against Robocast’s patents.
“On behalf of all Robocast stakeholders, I am grateful for the 8 out of 8 wins on IPRs for our cases against YouTube and Netflix. This is a major milestone for Robocast. Gratitude especially to the several legal teams at McKool Smith, Cantor Colburn, and Sofer and Haroun, and our SVP of Legal, Intellectual Property, Brett D. Smith, Esq.,” said Damon C. Torres, inventor who is Robocast’s Chairman and CEO.
Some of the key facts and benefits of the PTAB’s decisions are:
- The PTAB declined to institute inter partes review of any of the 141 claims of the ‘451 Patent, ‘819 Patent, and ‘932 Patent challenged in the petitions.
- The PTAB found that Google, YouTube, Netflix, and Unified Patents were “not reasonably likely to prevail in showing that” any of the challenged claims is anticipated by or would have been obvious over any of the prior art raised by the petitioners.
- The PTAB’s decisions are not appealable.
“We are very pleased with the PTAB’s decisions, which further validates Robocast’s pioneering inventions and confirms its strong patent position in the playlist technology space,” said Steven J. Rizzi, Esq. who leads the team from McKool Smith representing Robocast. “We look forward to focusing our efforts on proving Robocast’s infringement claims against Netflix and YouTube in federal court, where trials are scheduled for early 2025.” McKool Smith was recognized by IAM as having the highest win rate for patent owners before the PTAB in 2022.
“Given that Robocast’s automated playlist inventions date back to the mid-1990s when many Internet technologies were still in their relative infancy, it came as no surprise to us that Netflix and YouTube were unable to present any invalidating prior art to the PTAB,” added Marc Henschke, leader of the team from Cantor Colburn also representing Robocast. Cantor Colburn was most recently ranked in the top five firms in the nation on the US Utility Patent Toteboard.
Robocast is represented by McKool Smith and Cantor Colburn in the IPR proceedings and the related district court litigation. Robocast is asserting the ‘451 Patent and these two other patents from the same family against Netflix and Google/YouTube in the U.S. District Court for the District of Delaware after having previously successfully asserted the ‘451 Patent against Microsoft and Apple.
Robocast develops and licenses playlist technology for online media consumption. Robocast’s patented technology allows users to create, share, and enjoy personalized playlists of web content with minimal user input. Robocast’s vision is to revolutionize the way people browse and discover online media.
To find out how Robocast can help you create, share, and enjoy personalized playlists of web content, visit www.robocast.com or contact firstname.lastname@example.org today.