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A patent licensing company accusing HP of infringing old Panasonic patents is seeking to resume its suit in Texas federal court, arguing that an invalidity ruling it lost last month at the U.S. International Trade Commission doesn't hold up in district court.

"The facts relied on by [Administrative Law Judge Monica Bhattacharyya] to find two of the asserted patents invalid for obviousness-type double patenting have changed," California-based VideoLabs Inc. said in a Friday motion to lift a stay. The litigation with HP Inc. is over patents initially issued to engineers at Panasonic covering ideas related to coding videos.

HP notched a win at the ITC in April when commissioners signed off on findings from Judge Bhattacharyya that the language in the claims VideoLabs asserted were too indefinitely written for patent protection.

But VideoLabs said Friday that new information has come to light.

VideoLabs HP Patent Suit

"These facts include a change in ownership of family member patents and the filing of terminal disclaimers, which impact the references relied on by the ALJ to find two of the asserted patents invalid for obviousness-type double patenting at the ITC," VideoLabs argued. It did not elaborate.

"These changes present a question of material fact and make summary judgment on the validity of these patents inappropriate," the motion said.

VideoLabs said this means its case against HP in Texas should be allowed to proceed.

It said HP will likely oppose this move and, instead, will be asking U.S. District Judge Alan D. Albright to lift the stay only in order to rule on an "early summary judgment motion on invalidity." Such a filing from HP has yet to land in court, however.

VideoLabs said it's too soon for Judge Albright to contemplate moving the case in this direction.

"If defendant files a motion for summary judgment on invalidity regarding the asserted patent found indefinite by the ALJ, this court will still need to construe the disputed claim terms to rule on the motion," VideoLabs argued. "​​ITC findings are not binding on this court, and any disputed claim terms will need to be construed by this court."

Representatives for VideoLabs and HP did not return a request for comment.

The patents-in-suit are U.S. Patent Nos. 7,769,238; 8,139,878; and 8,208,542.

VideoLabs is represented by William D. Belanger, Gregory D. Len, Frank D. Liu, Griffin Mesmer, Ryan C. Deck, and Ana Spone of Troutman Pepper Hamilton Sanders LLP, and Max Ciccarelli of the Ciccarelli Law Firm LLC.

HP is represented by Elizabeth M. Chiaviello of Morgan Lewis & Bockius LLP.

The case is VideoLabs Inc. v. HP Inc., case number 6:22-cv-01086, in the U.S. District Court for the Western District of Texas.