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22 December 2020PatentsMuireann Bolger

Roku avoids new trial in $41m screen mirroring dispute

Digital streaming company  Roku will not have to re-litigate a $41 million patent infringement dispute which had gone in its favour at trial.

The US District Court for the Western District of Texas, Waco Division,  confirmed that a new trial would not take place on Friday, December 18.

In October 2018, Florida-based MV3 filed a  complaint against Roku, a manufacturer and seller of digital streaming products including set-top boxes.

MV3 accused Roku of infringing its screen mirroring technology protected by US patent number 8,863,223. The patent, issued in 2014 and called ‘Mobile Set Top Box’, covers a means of displaying content from a smartphone on a television.

MV3 cited a number of instances of infringement in its complaint. For example, Roku’s boxes determine a file format from a mobile computing device, which is a functionality disclosed in claim 1 of the ‘223 patent.

Another example given was that Roku’s boxes authenticate the validity of the user and then determine whether the media selected is permitted to be displayed. Again, MV3 said that this functionality is a claim of its patent.

MV3 asked the court to compensate it for Roku’s alleged infringement, “in an amount measured by no less than a reasonable royalty”, plus interest. It also sought a judgment that Roku infringed the ‘223 patent, as well as attorneys’ fees and “such further and additional relief as is deemed appropriate”.

At trial, MV3 asked for damages of more than $41 million to be awarded.

However, in October 2020, a socially-distanced, mask-wearing jury found that Roku did not infringe MV3’s patent and declined to award damages.

In response, MV3 claimed that Roku created a “trial by ambush”. According to MV3, Roku tainted the jury with “constant and brazen misconduct” by implying that MV3 was a non-practising entity. On this basis, MV3 asked for a new trial to be held.

On Friday, the court rejected MV3’s request in just one paragraph, finding that “it is not well taken and should be denied”.

As a result, the jury’s October verdict stands, and Roku is not liable for infringing to ‘223 patent.

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