DCT
3:20-cv-03333
Rothschild Broadcast Distribution Systems LLC v. Ubisoft Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Broadcast Distribution Systems, LLC (Texas)
- Defendant: Ubisoft, Inc. (Delaware)
- Plaintiff’s Counsel: SML AVVOCATI P.C.
- Case Identification: 3:20-cv-03333, N.D. Cal., 05/15/2020
- Venue Allegations: Venue is alleged to be proper in the Northern District of California because Defendant is deemed to be a resident in the District.
- Core Dispute: Plaintiff alleges that Defendant’s Uplay+ video game subscription service infringes a patent related to systems and methods for storing and delivering media content in a cloud-based environment.
- Technical Context: The technology concerns on-demand digital content delivery, where a central server system authenticates users and manages requests to either store content for later access or stream currently available content.
- Key Procedural History: The complaint does not mention any prior litigation, inter partes review (IPR) proceedings, or licensing history related to the patent-in-suit. The asserted patent is a continuation of a prior application which has also issued as a patent.
Case Timeline
| Date | Event |
|---|---|
| 2011-08-29 | ’221 Patent Priority Date |
| 2014-10-07 | ’221 Patent Issue Date |
| 2020-05-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,856,221 - “System and Method for Storing Broadcast Content in a Cloud-Based Computing Environment”
- Patent Identification: U.S. Patent No. 8,856,221, “System and Method for Storing Broadcast Content in a Cloud-Based Computing Environment,” issued October 7, 2014.
The Invention Explained
- Problem Addressed: The patent’s background section describes the inefficiency and high cost of on-demand media services that must store vast libraries of content (e.g., all broadcast television shows), passing that cost on to consumers who may have no interest in the majority of the content. It also notes the issue of flat-rate subscription fees that do not reflect a user's actual consumption. (’221 Patent, col. 1:36-57).
- The Patented Solution: The invention describes a system where a server receives a request from an authenticated user. The system is designed to differentiate between a "storage request" (e.g., asking the server to record and save a specific program for a set duration) and a "content request" (e.g., asking to stream a program that is already available). This allows the system to manage storage resources and potentially tailor costs based on specific user actions rather than maintaining a massive, static library for all subscribers. (’221 Patent, Abstract; col. 5:20-41; Fig. 2).
- Technical Importance: This approach sought to create a more dynamic and cost-effective on-demand system by aligning data storage and delivery with explicit consumer requests, moving away from the one-size-fits-all library model. (’221 Patent, col. 2:12-15).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 7. (Compl. ¶15, ¶17).
- The essential elements of independent method Claim 7 include:
- Receiving a request message from a consumer device, where the message includes an identifier for the requested media and an identifier for the consumer device.
- Determining if the consumer device identifier corresponds to a registered user.
- If the user is registered, determining if the message is a "storage request" or a "content request."
- If it is a "storage request," determining if the content is available for storage.
- If it is a "content request," initiating delivery of the content to the device.
- The complaint does not explicitly reserve the right to assert dependent claims, but makes a general allegation of infringing "one or more claims." (Compl. ¶15).
III. The Accused Instrumentality
Product Identification
- The "Uplay+ streaming platform" (now known as Ubisoft+), and any similar products offered by Defendant. (Compl. ¶17).
Functionality and Market Context
- Uplay+ is described as a subscription service providing access to a catalog of over 100 PC games for a monthly fee. (Compl. p. 4). The service requires users to register for an account and log in to access content. (Compl. ¶20; p. 7). A promotional graphic in the complaint describes a three-step user process: "Subscribe to UPLAY+," "Visit the UPLAY+ game list and select the game you want to play by activating it," and "Your game is activated in your games library on Uplay PC. Download it and enjoy!". (Compl. p. 4). The complaint alleges this system necessarily receives requests from users, differentiates between storing content (downloading a game) and delivering content (playing a game), and authenticates users before granting access. (Compl. ¶¶19-21).
IV. Analysis of Infringement Allegations
’221 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a request message including media data indicating requested media content and a consumer device identifier corresponding to the consumer device; | The Uplay+ service has infrastructure to receive a request to store (download) or stream a game, which includes data identifying the game and user credentials that act as a consumer device identifier. | ¶19 | col. 12:42-45 |
| determining whether the consumer device identifier corresponds to a registered consumer device; | The service requires a user to log in with an account to access the game library, thereby determining if the user is registered. A screenshot of the Ubisoft login page is provided as evidence. (Compl. p. 7). | ¶20 | col. 12:46-47 |
| if it is determined that the consumer device identifier corresponds to the registered consumer device, then: determining, whether the request message is one of a storage request message and a content request message; | After a user logs in, the system "necessarily determines" if the request is for storage (downloading) or for content (streaming/playing). | ¶21 | col. 13:5-8 |
| if the request message is the storage request message, then determining whether the requested media content is available for storage; | The system "verifies that media content... is available for storage in order to prevent data errors," such as by checking subscription status or that the user has not exceeded a memory limit. | ¶22 | col. 13:9-12 |
| and if the request message is the content request message, then initiating delivery of the requested media content to the consumer device; | If a customer requests content (e.g., to stream or play), a processor "initiates delivery of the content to the customer's device." The complaint points to marketing materials stating users can "Download it and enjoy!". (Compl. p. 11). | ¶23 | col. 13:13-16 |
| wherein the media data includes time data that indicates a length of time to store the requested media content; | The complaint alleges the existence of media data indicating a storage time limit, such as 30 days. The primary supporting evidence cited is that "Downloaded games will be accessible for the duration of the subscription." (Compl. p. 4, ¶24). | ¶24 | col. 11:1-3 |
| and the first processor is further configured to determine whether the requested media content exists; and if the processor determines that the requested media content exists, the processor is further configured to determine whether the requested media content is available and whether there are restrictions associated with the requested media content... | The server first determines if the requested game exists in the cloud to prevent errors, and then determines if there are any restrictions (e.g., subscription level) before making it available. | ¶¶25, 26 | col. 11:4-12 |
- Identified Points of Contention:
- Scope Questions: Claim 7 of the ’221 patent appears to mix method steps (e.g., "receiving," "determining") with apparatus limitations (e.g., "the first processor is further configured to..."). This raises a significant question of indefiniteness under 35 U.S.C. § 112, as a single claim generally cannot claim both a method and an apparatus. The court will need to determine if the claim is valid as written and, if so, how to properly construe its scope.
- Technical Questions: Does the accused service’s "download" function map to the patent's distinct "storage request" and "content request" steps, or is it a single, undifferentiated action? Furthermore, a key question is whether access "for the duration of the subscription" satisfies the claim limitation requiring "time data that indicates a length of time to store the requested media content." The patent specification appears to contemplate a discrete time period (e.g., "one month, one week") selected by the user, which may differ from an open-ended subscription term. (’221 Patent, col. 5:32-34).
V. Key Claim Terms for Construction
The Term: "storage request message"
Context and Importance: The claim's logic bifurcates based on whether a user's action generates a "storage request message" or a "content request message." The definition of this term is critical to determining if the accused product's functionality aligns with the patented method. Practitioners may focus on this term because if a single user action (e.g., clicking "download") is found to be both simultaneously, it may not map to the claim's sequential logic.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests a "storage request message may have a triggering flag," which could be interpreted broadly to mean any request that results in content being saved. (’221 Patent, col. 5:27-28).
- Evidence for a Narrower Interpretation: The specification describes a process where the "consumer is requesting that remote server 16 store specific media content for an amount of time." (’221 Patent, col. 5:23-26). This could support a narrower definition requiring an explicit, user-defined request to archive content for a specific duration, distinct from simply downloading it for immediate play.
The Term: "media content"
Context and Importance: The infringement claim depends on whether the video games offered by Ubisoft's service fall within the scope of "media content" as used in the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses the general term "media content" throughout its claims and specification, and provides "video" and "music" as non-limiting examples. (’221 Patent, col. 3:32). Plaintiff may argue that interactive games are a form of video media.
- Evidence for a Narrower Interpretation: The patent's background section focuses exclusively on the problems of streaming passive, linear content like "on-demand videos and music" and "television shows." (’221 Patent, col. 1:33-39). A defendant could argue the invention was intended to solve problems specific to that field and should not be construed to cover complex, interactive software like video games, which present different technical challenges.
VI. Other Allegations
- Indirect Infringement: The complaint does not provide sufficient detail for analysis of indirect infringement. It contains only a general recitation of infringement under 35 U.S.C. § 271. (Compl. ¶3).
- Willful Infringement: The complaint alleges that Defendant has had knowledge of its infringement "at least as of the service of the present complaint." (Compl. ¶14). This allegation supports a claim only for post-filing willfulness and does not allege any pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim validity and construction: can Claim 7, which appears to improperly mix method and apparatus limitations, survive a challenge for indefiniteness under 35 U.S.C. § 112? If it survives, its construction will be critical in determining whether it can read on the accused service.
- A key evidentiary question will be one of functional mapping: does the Uplay+ service’s user flow, which centers on a "download" action, perform the distinct "storage request" and "content request" steps required by the claim? Further, does providing access "for the duration of the subscription" meet the more specific claim requirement of "time data that indicates a length of time to store" the content?
- The case may also turn on a question of definitional scope: can the term "media content", which is rooted in the patent's discussion of passive television shows and music, be construed broadly enough to cover the complex, interactive video games that constitute the accused service?