Dolby Laboratories Licensing Corporation v. Roku, Inc.

CourtDistrict Court, N.D. California
DecidedJuly 18, 2025
Docket5:24-cv-04660
StatusUnknown

This text of Dolby Laboratories Licensing Corporation v. Roku, Inc. (Dolby Laboratories Licensing Corporation v. Roku, Inc.) is published on Counsel Stack Legal Research, covering District Court, N.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Dolby Laboratories Licensing Corporation v. Roku, Inc., (N.D. Cal. 2025).

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 8 DOLBY LABORATORIES LICENSING Case No. 24-cv-04660-EJD CORPORATION, et al., 9 ORDER GRANTING IN PART, Plaintiffs, DENYING IN PART MOTION TO 10 DISMISS v. 11 ROKU, INC., Re: ECF No. 47 12 Defendant.

13 Dolby Laboratories Licensing Corporation and Dolby International AB (collectively, 14 “Dolby”) bring this action for breach of contract, copyright infringement, patent infringement, 15 negligent misrepresentation, and fraudulent concealment against Roku, Inc. (“Roku”). First Am. 16 Compl. (“FAC”), ECF No. 41. Dolby’s various claims all stem from Roku’s alleged breach of 17 software license agreements and efforts to conceal such breach. Before the Court is Roku’s 18 motion to dismiss Dolby’s FAC. Mot., ECF No. 47. The motion was fully briefed on December 19 13, 2024. Opp., ECF No. 48; Reply, ECF No. 49. 20 Upon careful consideration of the relevant documents, the Court finds this matter suitable 21 for decision without oral argument pursuant to Local Rule 7-1(b). For the reasons stated below, 22 the Court GRANTS IN PART and DENIES IN PART Roku’s motion to dismiss. 23 I. BACKGROUND 24 This is a dispute between a licensor and its licensee. Roku, the licensee, sells hardware 25 and software products that facilitate internet streaming of content onto televisions. FAC ¶¶ 16, 40. 26 On the software side of its business, Roku sells advertising and distributes streaming services via 27 its streaming device operating system known as “Roku OS.” Id. ¶ 40, 48–51. As for hardware, 1 Roku sells “devices” or “players,” including Roku-branded televisions, audio devices, and 2 accessories. Id. ¶¶ 40, 43. 3 Dolby, the licensor, develops and licenses audio and video technology to improve 4 entertainment experiences. Id. ¶ 21; Opp. 3. Dolby generally does not sell products directly to 5 consumers, opting instead to license its technologies through a network of licensee partners. FAC 6 ¶¶ 22–23. As relevant here, Dolby’s licensee network includes technology companies like Roku, 7 system-on-a-chip (“SoC”) manufacturers, and third-party original equipment manufacturers 8 (“OEMs”)—e.g., television manufacturers. See id. ¶ 99. 9 There are two software license agreements at issue here. Id. ¶¶ 57–58. On May 12, 2015, 10 the parties entered into the Interoperability License Agreement (“ILA”), which gave Roku limited 11 rights to use certain Dolby intellectual property (“Dolby Technologies”) for testing in Roku’s 12 middleware—i.e., Roku OS. Id. ¶ 57; ILA § 3.1, ECF No. 32-4. The license only allowed Roku 13 to verify that Roku OS was compatible with Dolby Technologies embodied in products that Roku 14 received from upstream SoC manufacturers and products that OEMs built for end users. Id. 15 Third-party SoC manufacturers and OEMs have their own separate license agreements with Dolby 16 that allow them to implement and distribute Dolby Technologies in their products. FAC ¶ 57. 17 On September 8, 2016, Dolby and Roku then entered into the System License Agreement 18 (“SLA”), which allowed Roku to design, develop, use, manufacture, and sell its own products 19 containing certain licensed Dolby Technologies. See id. ¶ 58. The SLA required Roku to report 20 its sales of products that contain licensed Dolby Technologies on a quarterly basis and pay 21 royalties pursuant to a set schedule. Id. ¶¶ 59, 116–17 (quoting SLA §§ 4.2, 4.6, ECF No. 32-5). 22 The SLA applied only to devices that Roku sold to end users, not to middleware like Roku OS. 23 Id. ¶ 59. The agreement also gave Dolby the right to audit Roku to ensure compliance with the 24 latter’s contractual obligations. Id. ¶¶ 59, 119 (quoting SLA § 4.7). 25 Dolby alleges that beginning in 2015, Roku violated the ILA and infringed Dolby’s 26 intellectual property rights. Id. ¶¶ 64–73. Roku allegedly included copies of Dolby Technologies 27 in Roku OS and in further updates to the operating system software that were pushed directly to 1 end users without authorization from Dolby. Id. One such update, Roku OS 9.0, allegedly 2 included an implementation of Dolby’s AC-3 audio compression technology that Roku claims it 3 received from an unlicensed third-party source. Id. ¶¶ 74–79. 4 Dolby further avers that it did not uncover the alleged misconduct until years after the 5 infringement began, because the nature of Roku’s software and representations concerning its 6 software distributions misled Dolby into believing no such misconduct was occurring. On March 7 6, 2020, two Roku product managers spoke with a Dolby employee and allegedly denied that 8 Roku was distributing Dolby Technologies in Roku OS. Id. ¶ 81–82. Dolby asserts that this was 9 materially misleading and that it relied on the misrepresentation. Id. Nearly a year later, Dolby 10 exercised its contractual right and attempted to audit Roku for the 2016-2020 period to ensure 11 compliance with the ILA, but Roku resisted the requests for information. Id. ¶¶ 84–85. Roku 12 instead attempted to limit the scope of the audit, arguing that Roku OS did not fall within the 13 scope of any contractual audit requirement. Id. ¶ 85. On February 18, 2022, Roku provided a 14 partial list of third parties to whom Roku provided Dolby Technologies. Id. ¶ 86. Dolby then 15 realized that Roku’s prior statements were false, because the existence of this list was inconsistent 16 with Roku’s March 2020 representation that it was not distributing Dolby Technologies. Id. From 17 2022 through 2023, Roku produced more information but denied that it had any additional 18 payment obligations to Dolby based on any alleged unlicensed sales of Dolby Technologies. Id. 19 ¶¶ 86–91. The parties continued audit discussions through June 2024, the conclusion of which 20 resulted in Dolby filing the instant lawsuit in August 2024. Id. ¶¶ 91–93. 21 II. LEGAL STANDARD 22 Roku seeks dismissal of Dolby’s FAC under Rule 12(b)(6). To survive Roku’s motion, the 23 FAC “must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is 24 plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. 25 Twombly, 550 U.S. 544, 570 (2007)). A claim is facially plausible when the facts alleged allow 26 the Court to draw the reasonable inference that the defendant is liable for the alleged misconduct 27 beyond a mere possibility. Id. The Court does not, however, accept conclusory allegations or 1 draw unreasonable inferences from the allegations. In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 2 1055 (9th Cir. 2008) (citation omitted). 3 III. DISCUSSION 4 Roku’s motion groups the causes of action in the FAC into four categories: (1) breach of 5 contract [Counts One through Four], (2) copyright infringement [Counts Five and Six], (3) patent 6 infringement [Count Seven], and (4) negligent misrepresentation and fraudulent concealment 7 [Counts Eight and Nine]. The Court adopts the same organization in its analysis. 8 A. Breach of Contract (Counts One–Four) 9 Roku asserts several arguments to dismiss Dolby’s breach of contract claims. First, Roku 10 argues that Counts One through Three are time-barred by the relevant statute of limitations. Roku 11 then argues that Count Two also fails because it does not allege a violation of the SLA. Roku also 12 contends that Count Three, breach of the implied covenant, should be dismissed as duplicative of 13 Dolby’s breach of contract claims. Lastly, Roku argues that Count Four, failure to comply with 14 audit obligations, should be dismissed because it contradicts the express terms of the SLA.

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Dolby Laboratories Licensing Corporation v. Roku, Inc., Counsel Stack Legal Research, https://law.counselstack.com/opinion/dolby-laboratories-licensing-corporation-v-roku-inc-cand-2025.