LexOrbis

Tapping The Hidden Potential Of Acquired Patents

Tapping The Hidden Potential Of Acquired PatentsThe 21st century has seen a rapid surge in technological innovation, from minor tweaks to revolutionary breakthroughs. However, not all patented inventions achieve significant market success. Several challenges can hinder effective commercialisation, including a lack of funding, difficulties in scaling production, and trouble securing the right investors or strategic partners. In these situations, patentees typically explore assignment or licensing options to bring their inventions to market.

A key question arises: What are the implications when a financially distressed patentee transfers a patented technology that has seen commercialisation but struggles to stay viable in the market? Regardless of the change in ownership, the patents remain protected under intellectual property rights. When a patent is acquired, any ongoing litigation associated with it typically transfers as well. The new acquirer then has the option to either settle the dispute or pursue legal action, seeking a court intervention to rule on infringement and potentially claiming damages.

The recent VidStream vs X Corp. (formerly Twitter, Inc.) patent infringement case garnered significant public and industry attention for various reasons that align closely with the central theme of this article. In this case, the plaintiff, VidStream, acquired a patent from Youtoo Technologies, LLC, the original patentee, after the company had declared bankruptcy. Along with the patent, VidStream took over the ongoing litigation originally filed by Youtoo Technologies, LLC, against Twitter, Inc.

This case serves as a compelling example of the untapped value of acquired patents. By analysing VidStream’s strategic acquisition and the subsequent legal victory, the case highlights how patented technologies, especially those which have initially struggled to survive in the market, can become powerful assets when leveraged effectively.

Case Study: VidStream, LLC vs X Corp. (formerly Twitter, Inc.), a social media platform, is now owned by Elon Musk

Background

  • In March 2016, Youtoo Technologies, LLC (“Youtoo”) filed a patent infringement lawsuit [[35 U.S.C. §271 [also seeks Remedy for infringement of a patent under U.S.C. §281; damages under U.S.C. §284; and Attorneys’ fees and cost under U.S.C. §285]] against Twitter, Inc. (now X Corp., owned by Elon Musk) for infringing three of its patents related to creating and sharing video content (“Content Creation and Distribution System”, CCDS):
  • S. Patent No. 9,083,997 (‘997)
  • S. Patent No. 8,464,304 (‘304)
  • S. Patent No. 8,601,506 (‘506)

“Youtoo’s inventions enable Internet users to record video in social networks or on social network mobile applications and to distribute the recorded video in the same social network, to another social network, embed it in a webpage, or to make the video available to a television network for broadcast on television.” [Reference: Point 5, Page 2 of the Complaint filed on March 18, 2016, by Plaintiff, Youtoo Technologies, LLC (“Youtoo”)]

  • The case was registered under Case No. 3:16-cv-00764-N in the U.S. District Court for the Northern District of Texas with the claim for patent infringement against Twitter that:

“Twitter acquired Vine in January 2013 and launched Vine as a standalone mobile device application used for recording and sharing video clips. Twitters, through its development and operation of Vine, is doing business and infringing Youtoo’s patents in Texas and elsewhere in the United States.” [Reference: Point 7, Page 2 of the Complaint filed on March 18, 2016, by Plaintiff, Youtoo Technologies, LLC (“Youtoo”)]

  • In 2017, Twitter, Inc. responded by filing two petitions requesting an Inter parties review (“IPR”) at the Patent Trial and Appeal Board (“PTAB”, an administrative body of USPTO) for U.S. Patent No. ‘997, which is a common procedure in patent disputes, pursuant to 35 U.S.C. § 311-319:
  • “PTAB” issued Final Written Decision (For Cases: IPR2017-00829, IPR2017-00830) that found Patent ‘997 unpatentable under U.S. patent law pursuant to 35 U.S.C. §101. [“PTAB” FINAL WRITTEN DECISION entered on January 28, 2019, pursuant to 35 U.S.C. §318(a) and 37 C.F.R. §42.73]
  • VidStream filed an appeal to challenge the PTAB’s Final Written Decisions on Patent No. ‘997 [IPR2017-00829, IPR2017-00830] before the U.S. Court of Appeals for the Federal Circuit. The Court affirmed that Bradford is prior art and PTAB’s ruling of unpatentability of claims of Patent ‘997. [Appeal Decided on November 25, 2020]
  • In 2017, Youtoo filed for bankruptcy. During that process, VidStream also acquired all the patents owned by Youtoo.
  • In 2017, Twitter filed a petition for Inter Partes Review of Patents’ ‘304 and ‘506, pursuant to 35 U.S.C. 314, and failed to prove that U.S. Patent No. ‘304 (IPR2017-01131) and ‘506 (IPR2017-01133) were unpatentable and obvious.

[“PTAB” FINAL WRITTEN DECISION entered on January 23, 2019, pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73]

  • In 2020, Twitter challenged the PTAB’s decision before the U.S. Court of Appeals for the Federal Circuit [Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017-01131 (U.S. Patent No. ‘304), IPR2017-01133 (U.S. Patent No. ‘506), and the Court concluded that the presented argument of Twitter was unpersuasive and PTAB’s Final Written Decisions were not contrary to law. [Appeal Decided on September 3, 2020]
  • The trial was carried out and processed in the U.S. District Court for the Northern District of Texas.
  • In April 2021, VidStream filed a Second Amended Complaint (“SAC”) for Patent Infringement against Twitter, Inc. (“Twitter” or “Defendant”) to prevent Defendant from infringing upon and deriving benefits from US Patent No. ‘304 and ‘506, pursuant to 35 U.S.C. §271.

Early Collaboration Discussions

According to the complaint [points 13–17, pages 3–5] filed by Plaintiff, “Youtoo Technologies”, it was alleged that early discussions took place with “Twitter” about potential collaboration prior to the lawsuit. The complaint claimed that Youtoo contributed to development efforts related to Twitter’s video tools and that the two parties explored possible licensing or partnership opportunities. While no formal agreement was reached, these alleged interactions were referenced in court documents and considered in evaluating Twitter’s familiarity with the patented technology. This case highlights the importance of clear intellectual property agreements during early-stage collaborations, particularly in areas involving emerging technologies.

The Legal Proceedings and Twist

  • Following Youtoo’s bankruptcy, the case was stayed for two additional years due to VidStream’s delay in notifying the Court of its acquisition of the three patents linked to the “PTAB” decision and Court Order. During that time, VidStream remained active in related proceedings before the Patent Office.
  • In March 2020, VidStream filed a motion to substitute itself as the plaintiff and requested reconsideration of the prior Section 101 ruling.
  • The District Court granted both motions in April 2021, allowing VidStream to proceed with the litigation.
  • In January 2024, VidStream filed a motion for a preliminary injunction seeking to prevent the ongoing use of the technology by X Corp. (formerly known as Twitter Inc.). The Court denied the motion, concluding that the evidence presented did not meet the standard for injunctive relief.
  • On April 16, 2025, a jury concluded that X Corp. had infringed U.S. Patent No. 8,464,304 (‘304) and awarded damages exceeding $105 million to VidStream. [COURT’S CHARGE TO THE JURY dated April 15, 2025]

Conclusion

The VidStream vs X Corp. case highlights the potential value of acquiring underutilised or distressed patents. What began as a commercialisation effort by Youtoo Technologies, including discussions with Twitter, ultimately led to a favourable legal outcome for VidStream. During the proceedings, prior interactions between Youtoo and Twitter, including discussions about video technology and potential collaboration, were referenced as part of the case record and provided context for the jury’s deliberations. This context was among the factors considered by the jury in evaluating the infringement claim related to U.S. Patent No. 8,464,304 (‘304) and resulted in an exceeding $105 million damages award.

A key takeaway is that clearly defined agreements and a proactive approach to intellectual property can help reduce the risk of disputes in the future. For businesses and innovators, even unused or forgotten patents can become valuable assets when managed strategically and responsibly.

Whether the patentee is a startup or an individual, securing IP rights early creates long-term leverage. An innovation’s value is determined not only by market success but also by the vision and strategy of those who hold the rights. Through smart acquisition, enforcement, or licensing, businesses can turn overlooked patents into high-value assets, driving growth, reducing risk, and unlocking untapped potential.

Authors: Manisha Singh and Deepika Chand

First Published by: Mondaq here