Advanced Coding Technologies v. LG Electronics: Video Codec Patent Dispute Dismissed With Prejudice
Advanced Coding Technologies LLC asserted four video encoding and decoding patents against LG Electronics in the Eastern District of Texas. The parties jointly moved to dismiss all claims with prejudice after 623 days of litigation, with each side bearing its own costs — a resolution that forecloses any refiling on these patents against LG.
Four Video Codec Patents, One Joint Exit: ACT v. LG in E.D. Texas
Advanced Coding Technologies LLC (ACT) filed suit against LG Electronics, Inc. and LG Electronics U.S.A., Inc. on December 30, 2022, in the Eastern District of Texas before Judge Rodney Gilstrap. ACT alleged infringement of four U.S. patents — US8090025B2, US9986303B2, US6845128B2, and US10218995B2 — all directed to video encoding, decoding, and re-encoding systems and methods. The accused products are LG consumer electronics incorporating moving picture coding and transmission technology.
The case concluded on September 13, 2024, when Judge Gilstrap granted the parties’ Joint Motion to Dismiss with Prejudice. All claims asserted by ACT against LG and all counterclaims and defenses asserted by LG against ACT were dismissed with prejudice. Each party was ordered to bear its own attorneys’ fees, costs, and expenses. A dismissal with prejudice is a final adjudication on the merits, meaning ACT cannot reassert these four patents against LG in future litigation.
The 623-day duration and the mutual cost-bearing arrangement are consistent with a negotiated resolution — likely a confidential license or cross-release — though the public record is silent on financial terms. The joint nature of the motion, filed as Dkt. No. 220, suggests the parties reached agreement before any trial date. The large defense team deployed by LG (eleven attorneys across five firms including Fish & Richardson and Greenberg Traurig) suggests LG mounted a vigorous defense, which may have accelerated settlement dynamics.
Filing to Dismissed with Prejudice in 623 days
623 days — above the E.D. Texas median for patent cases that settle before trial
Dismissed with prejudice: what the joint order means for both parties
Dismissal with prejudice bars any refiling on these patents
A dismissal with prejudice under Federal Rule of Civil Procedure 41 operates as a final judgment on the merits. ACT cannot refile suit against LG Electronics on US8090025B2, US9986303B2, US6845128B2, or US10218995B2. The joint nature of the motion means both parties consented, which typically signals a negotiated resolution rather than a unilateral capitulation by either side.
Final — no refiling possibleACT permanently releases LG from these four patent claims
By agreeing to a with-prejudice dismissal, ACT has permanently relinquished its right to pursue LG on these patents. Whether ACT received a licensing payment in return is not publicly disclosed. The patents remain in ACT’s portfolio and can still be asserted against other defendants, but the LG litigation risk for these specific patents is extinguished.
Patent survives — LG released onlyLG secures permanent peace on four video codec patents
LG Electronics and LG Electronics U.S.A. achieve certainty: ACT’s video encoding and decoding patent claims are permanently resolved. Each party bearing its own costs is commercially neutral on its face, though it avoids any exceptional-case fee award either way. LG’s investment in a large multi-firm defense team (Fish & Richardson, Greenberg Traurig, Gillam & Smith) appears to have contributed to a resolution without a damages verdict.
Full release secured by LGVideo codec IP remains live risk for other consumer electronics makers
The dismissal with prejudice resolves ACT’s claims against LG but does not affect the validity or enforceability of the four patents against third parties. Companies incorporating MPEG-style video encoding, decoding, or re-encoding in consumer electronics, streaming devices, or broadcast equipment remain potential targets. ACT’s use of Fabricant LLP — a firm with a strong NPE litigation track record — suggests continued assertion activity is plausible.
Patents remain enforceable vs. othersFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Advanced Coding Technologies LLC | Company | Video codec patent assertion entity — holder of US8090025B2 and three related encoding patentsSearch in Eureka ↗ |
| Defendant | LG Electronics, Inc. | Company | LG Electronics Inc. and LG Electronics U.S.A. Inc. — global consumer electronics and television manufacturerSearch in Eureka ↗ |
| Co-Defendant | Lg Electronics U.S.A., Inc. | Company | Search in Eureka ↗ |
| Plaintiff counsel | Alfred Ross Fabricant | Attorney | Counsel for Advanced Coding Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Joseph Michael Mercadante | Attorney | Counsel for Advanced Coding Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Julian Glenn Pymento | Attorney | Counsel for Advanced Coding Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Justin Kurt Truelove | Attorney | Counsel for Advanced Coding Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Peter Lambrianakos | Attorney | Counsel for Advanced Coding Technologies LLCSearch in Eureka ↗ |
| Plaintiff counsel | Vincent J. Rubino , III | Attorney | Counsel for Advanced Coding Technologies LLCSearch in Eureka ↗ |
| Plaintiff law firm | Fabricant LLP | Law Firm | Representing Advanced Coding Technologies LLCSearch in Eureka ↗ |
| Plaintiff law firm | Fabricant LLP (NY) | Law Firm | Representing Advanced Coding Technologies LLCSearch in Eureka ↗ |
| Plaintiff law firm | Truelove Law Firm | Law Firm | Representing Advanced Coding Technologies LLCSearch in Eureka ↗ |
| Defendant counsel | Allan A. Kassenoff | Attorney | Counsel for LG Electronics, Inc.Search in Eureka ↗ |
| Defendant counsel | Danielle Zapata Mills | Attorney | Counsel for LG Electronics, Inc.Search in Eureka ↗ |
| Defendant counsel | Jared Lee | Attorney | Counsel for LG Electronics, Inc.Search in Eureka ↗ |
| Defendant counsel | Jenna Kuh | Attorney | Counsel for LG Electronics, Inc.Search in Eureka ↗ |
| Defendant counsel | Jonathan Peter Presvelis | Attorney | Counsel for LG Electronics, Inc.Search in Eureka ↗ |
| Defendant counsel | Melissa Richards Smith | Attorney | Counsel for LG Electronics, Inc.Search in Eureka ↗ |
| Defendant counsel | Richard A. Edlin | Attorney | Counsel for LG Electronics, Inc.Search in Eureka ↗ |
| Defendant counsel | Rose Cordero Prey | Attorney | Counsel for LG Electronics, Inc.Search in Eureka ↗ |
| Defendant counsel | Stephen M. Ullmer | Attorney | Counsel for LG Electronics, Inc.Search in Eureka ↗ |
| Defendant counsel | Thomas Pease | Attorney | Counsel for LG Electronics, Inc.Search in Eureka ↗ |
| Defendant counsel | Vimal M. Kapadia | Attorney | Counsel for LG Electronics, Inc.Search in Eureka ↗ |
| Defendant law firm | Fish & Richardson PC | Law Firm | Representing LG Electronics, Inc.Search in Eureka ↗ |
| Defendant law firm | Gillam & Smith, LLP | Law Firm | Representing LG Electronics, Inc.Search in Eureka ↗ |
| Defendant law firm | Greenberg Traurig LLP (New York) | Law Firm | Representing LG Electronics, Inc.Search in Eureka ↗ |
| Defendant law firm | Greenberg Traurig LLP (San Francisco) | Law Firm | Representing LG Electronics, Inc.Search in Eureka ↗ |
| Defendant law firm | Greenberg Traurig, LLP | Law Firm | Representing LG Electronics, Inc.Search in Eureka ↗ |
| Presiding judge | Judge Rodney Gilstrap | Judge | Texas Eastern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The verdict text confirms a fully consensual exit: both parties jointly moved for dismissal with prejudice, with all claims and counterclaims extinguished and costs split. The ‘with prejudice’ designation is the operative term — it functions as a final adjudication, permanently barring ACT from re-asserting these four patents against LG. The court’s notation that all pending relief not explicitly granted is denied as moot confirms no claim survived. The public record does not disclose whether a licensing payment accompanied the dismissal.
US8090025B2 and three companion patents — video encoding and decoding systems
The four patents at issue — US8090025B2, US9986303B2, US6845128B2, and US10218995B2 — collectively cover systems and methods for encoding, decoding, re-encoding, and transmitting moving picture (video) data. US6845128B2 is the earliest, suggesting a foundational priority claim in digital video compression; US10218995B2 is the most recent grant, indicating the portfolio spans multiple generations of codec development. The products involved reference MPEG-style encoding pipelines, coding data transmitters, and emphasis encoding techniques applicable to broadcast and consumer video hardware.
This patent family sits at the intersection of consumer electronics, streaming media, and broadcast infrastructure — sectors experiencing intense codec standardisation activity around H.264, HEVC, and AV1. Holding four granted patents covering encoding apparatus, decoding programs, and transmission systems gives ACT broad claim coverage across the video processing stack. For LG — whose smart TV and home entertainment lines depend on robust codec implementation — the assertion of these patents in the plaintiff-friendly Eastern District of Texas represented meaningful litigation exposure that LG chose to resolve with a high-resource legal response.
Should you run an FTO against US8090025B2 and the ACT video codec portfolio?
Any company commercialising video encoding, decoding, or streaming hardware in the United States should assess its exposure to ACT’s patent portfolio. The four patents cover not just encoding algorithms but also decoding programs, re-encoding systems, and video transmission apparatus — meaning exposure is not limited to codec chip manufacturers. Smart TV OEMs, set-top box vendors, OTT device makers, and broadcast encoder suppliers should map their implementations against these claims, particularly given ACT’s demonstrated willingness to litigate in E.D. Texas.
PatSnap Eureka’s FTO Search Agent can cross-reference your product’s video processing architecture against the claim scope of US8090025B2, US9986303B2, US6845128B2, and US10218995B2 in minutes. Eureka surfaces related prior art, identifies claim language that may read on encoding pipeline configurations, and flags related ACT prosecution history — giving your IP and R&D teams the intelligence needed to assess design-around options or freedom-to-operate risk before product launch.
Run a freedom-to-operate analysis on US8090025B2 to assess your product’s exposure
Run FTO in Eureka →Similar video codec and encoding patent cases in E.D. Texas
Cases involving video encoding and decoding patent assertions filed in the Eastern District of Texas by NPE plaintiffs against consumer electronics defendants.
What this case signals for the video codec IP enforcement landscape
ACT’s four-patent campaign against LG ended quietly — but the underlying patents and enforcement posture carry forward.
Dismissal with prejudice does not retire the patents — monitor ACT’s portfolio
US8090025B2 and its three companion patents remain active in ACT’s hands and can be asserted against any other electronics manufacturer. Companies selling video-enabled consumer devices in the US should treat ACT as an ongoing assertion risk and conduct proactive FTO analysis against this patent family.
E.D. Texas + Fabricant LLP signals an NPE enforcement pattern worth tracking
ACT filed in one of the most plaintiff-friendly patent venues using Fabricant LLP, a firm with a well-documented NPE practice. This filing profile — multiple encoding patents, a major OEM defendant, Eastern District of Texas — is consistent with a monetisation strategy that may target other consumer electronics companies with similar video processing technology.
Advanced v LG — key questions answered
The case was dismissed with prejudice on September 13, 2024, by joint motion of the parties before Judge Rodney Gilstrap in the Eastern District of Texas. All claims by ACT against LG and all counterclaims by LG against ACT were extinguished, with each party bearing its own costs.
ACT asserted four US patents: US8090025B2, US9986303B2, US6845128B2, and US10218995B2, all directed to moving picture encoding, decoding, re-encoding systems, and video image coding data transmission technology.
Not in the conventional sense. A joint dismissal with prejudice means both parties agreed to end the litigation on a permanent basis. It bars ACT from re-asserting these four patents against LG, but it is not a finding of non-infringement or invalidity. Whether a licensing payment was exchanged is not disclosed in the public record.
Yes. The dismissal with prejudice only releases LG Electronics and LG Electronics U.S.A., Inc. from liability on these four patents. ACT retains the right to assert US8090025B2, US9986303B2, US6845128B2, and US10218995B2 against any other parties. The patents remain active in ACT’s portfolio.
The Eastern District of Texas, particularly before Judge Rodney Gilstrap, is one of the most active and historically plaintiff-favourable patent venues in the United States. NPE plaintiffs like ACT, represented here by Fabricant LLP, frequently select E.D. Texas for its efficient case management and established patent litigation infrastructure.
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