Western District of Texas Judge Alan D. Albright has overturned a $25.9M infringement verdict against Alphabet (Google, YouTube) from 2022, ruling that plaintiff VideoShare, LLC had presented an infringement theory targeting the YouTube service that ignored a key limitation of the asserted independent patent claim. The ruling is the latest setback for the plaintiff in its 13-year-old dispute with Google—including an Alice invalidation that ended an earlier Delaware case, the impact of which was later disputed in the West Texas action.
VideoShare's campaign began not in Delaware but in Massachusetts, with an inaugural suit against Brightcove in July 2012 and an initial action against YouTube that same October—asserting the earliest-issuing patent (7,987,492) in one of the two families at issue in this campaign. The plaintiff voluntarily dismissed the Brightcove suit in May 2013 after the defendant challenged the sufficiency of the pleadings. VideoShare then apparently sought to shift the campaign to Delaware, filing a new wave of cases against Google, Viddler, and Vimeo that same June. The Delaware suit against Google (1:13-cv-00990) asserted two recently issued patents (8,438,608 and 8,464,302) that the USPTO had initially rejected as "not patentably distinct" from the '492 patent, only issuing the two patents after the plaintiff submitted a terminal disclaimer limiting their term to that of the '492 patent. One month later, VideoShare moved to voluntarily dismiss the Massachusetts case, disclosing that it had offered YouTube a covenant not to sue over the '492 patent, after which YouTube filed a motion to supplement its counterclaims to encompass the '608 and '302 patents and moved to transfer the Delaware case to Massachusetts.
In February 2014, Massachusetts District Judge Mark L. Wolf granted VideoShare's motion to dismiss, ruling that the covenant not to sue deprived the court of jurisdiction over the '492 patent. Judge Wolf also declined to allow the motion to supplement to add counterclaims over the '608 and '302 patents, holding that it was more appropriate for Delaware, the first district seized with claims between the parties over those newer patents, to adjudicate the parties dispute over them and that the Delaware court should be the one to decide (via the motion to transfer) whether it would do so. That same April, Delaware District Judge Gregory M. Sleet answered that question in the affirmative, denying the motion to transfer.
As noted above, the Delaware case then fell down the Alice rabbit hole in August 2016, when Judge Sleet held the claims of the '608 and '302 patents are patent-ineligibly drawn to the abstract idea of "preparing a video in streaming video format for sharing over a computer network". The Federal Circuit issued a summary affirmance one year later.
Judge Sleet's judgment on the pleadings followed an order construing claims from the '302 and '608 patents and mooted a pending motion challenging VideoShare's standing to sue over them, based on an alleged defect in the patents' chain of title. Google contended that VideoShare, Inc., the Delaware entity (formed in September 1998) that owned the patents pursuant to earlier assignments from their named inventors—Gad Liwerant, VideoShare, Inc.'s president, and Guillaume Boissiere and Christopher Dodge, both vice presidents of the company—dissolved without properly transferring rights to the patents to Liwerant. It was Liwerant who assigned rights to VideoShare, the current plaintiff. VideoShare filed an opposition brief countering that the VideoShare, Inc. board did authorize the assignment to Liwerant before dissolution, through an "instrument in writing", as required.
In November 2019, VideoShare sued Google and YouTube a third time (6:19-cv-00663), this time in the Western District of Texas—asserting a patent that issued that same July (10,362,341) as a continuation of the '302 patent, sharing the same specification. The defendants then moved to dismiss due to claim preclusion in February 2020, arguing that the asserted '341 patent claims are "essentially the same" as those from the invalidated '302 patent—notingthat VideoShare filed a terminal disclaimer during prosecution of the application that led to the '341 patent to overcome a double patenting rejection, as also mentioned above, and contending that the new claims are simply narrower versions of the prior claims, rendering them "not patentably distinct".
However, Judge Albright disagreed in a May 2020 order denying that motion, rejecting the defendant's argument that the scope of the claims are "essentially the same"—holding in part that claim preclusion cannot apply to the present case because the Alice invalidation in the prior case involved "no determination of the scope of the ['302] patent's claims". Judge Albright observed that an assessment of whether both patents lack an inventive concept would require the court to establish both (1) the scope of the patent asserted before it at an early stage, "without the benefit of formal claim construction"; and (2) the scope of the prior, invalidated patent, a patent not even before the court, holding that such an exercise would be inappropriate. As a result, Judge Albright concluded more broadly that "the doctrine of claim preclusion cannot be readily applied to analyzing patent eligibility".
In February 2021, Google then moved to dismiss as a result of the terminal disclaimer itself—arguing that VideoShare had disclaimed the portion of the term of the '341 patent that extended beyond the term of the '302 and '608 patents, and that as a result of a certain qualification in the terminal disclaimer, the term of the latter two patents ended when the Federal Circuit affirmed their invalidation in August 2017. Per Google, this meant that the '341 patent had also expired as of that date. Judge Albright denied that motion in October 2021, holding that by law, the result of the terminal disclaimer is that "[t]he term of the '302 was 'merely affixed' onto the '341 patent and ended 20 years after its application"; distinguishing between invalidity and expiration; rejecting Google's interpretation of the language of the disclaimer; and determining that the defendant's "argument creates an artificial backdoor to invalidity".
In early November (roughly three weeks later), soon after the court resolved a series of pending motions in a sealed omnibus order, the case went to trial. The following week, on the seventh day of trial, a jury found that Google had infringed claims 1-7 of the '341 patent, on which basis they awarded $25.9M in damages; and found and that Google had not shown those claims to be "well-understood, routine, and conventional", as relevant to the remaining question of patent eligibility. Beginning on the penultimate day of the jury trial, the court also held a bench trial on that issue and on Google's claims of inequitable conduct.
Though the docket does not indicate that Judge Albright issued findings of fact and conclusions of law resulting from that bench trial (proposed versions of which were submitted by both parties), his September 2022 final judgment indicated that he ruled in the plaintiff's favor on those issues. The final judgment also provided that the '341 patent is not invalid due to terminal disclaimer and that the plaintiff's claims are not barred due to res judicata, additionally awarding $646K in interest. In October 2022, Google filed a renewed motion seeking (in part) judgment as a matter of law of noninfringement, alternatively seeking a judgment of no damages, remittitur, or a new trial, with posttrial briefing apparently concluded in December. That same month, the court then granted Google's motion to stay the execution of the final judgment—doing so without requiring the defendant to provide a bond, over the plaintiff's objection, finding that "Google has demonstrated the availability of ample funds to pay the judgment".
The docket then grew quiet. In April 2024, with no order having yet issued, VideoShare filed a notice reminding the court that briefing on Google's posttrial motion had been completed since December 2022 (i.e., more than 16 months prior). Two months later, Judge Albright appointed a technical advisor to assist him with that decision, which he issued seven months after that—on May 6, 2025.
In that decision, unsealed on May 12, the court addressed Google's challenge of the jury's infringement ruling, which turned on the impact of the court's construction of a claim limitation describing the manner in which a server sends either a "stored first video file" or a "stored second video file . . . depending on a compatibility of the second server system or a compatibility of the second client with the first format or the second format". As recounted here by Judge Albright, he construed that term to require "that the server send the stored first video file if it determines that the first format is most compatible with the second server system or the second client or that the server send the stored second video file if it determines that the second format is compatible". Under VideoShare's infringement theory, "the 'first video file' is the video file that was originally uploaded to the server and is in the 'first format'", while the "'stored second video file' is the video file that was transcoded from the 'first video file'", with compatibility assessed through a certain two-step determination process (the details of which are redacted in the public-facing order).
Here, Judge Albright agreed with Google that it did not infringe independent claim 1 (and by extension dependent claims 2-7) on three bases, the first being that VideoShare had not alleged or shown that YouTube ever sends the "first video" file, meaning the originally uploaded file. The plaintiff had argued that "a file in the most compatible format—a format that is both a first format and a second format—is sent, meeting the claim limitation", but Judge Albright held (as Google had urged) that "the claim language does not support such an interpretation": The language "plainly requires that the first video file is sent when the first format is most compatible (and that the second video file is sent when the second format is most compatible); it does not, as VideoShare argues, only require that a file in a format that is most compatible is sent" (emphasis in original). Second, Judge Albright also agreed with Google that it did not infringe because VideoShare's infringement theory improperly rewrote or ignored the claim language, as a result of which it "has (obviously) not provided evidence for the claim language it ignores". Third, Judge Albright accepted Google's contention that VideoShare "incorrectly reads the 'first format' as referring to the format of a 'second video file" (emphasis in opinion), finding that this position was not supported by the claim language itself and that the plaintiff had given no justification for such a reading. The decision also rejected Google's alternative request for no damages, remittitur, or a new trial, as well as claims revisiting its arguments on. patent eligibility, claim preclusion, and terminal disclaimer.
Pending the outcome of a potential appeal, Judge Albright's decision ends the last active case in the long-running VideoShare campaign—which most recently saw the plaintiff's newest case, filed against Meta in March 2021, end in settlement in June 2023.
For more information on that case, and additional details on the Google litigation, see "Per VideoShare, Judge Albright Asked to Explore the 'Truly Vast' Territory Between Brilliant and Absurd" (March 2021).
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