DCT

3:23-cv-03674

MG Freesites Ltd v. DISH Tech LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:23-cv-03674, N.D. Cal., 09/06/2023
  • Venue Allegations: Plaintiff Aylo alleges venue is proper in the Northern District of California based on Defendants' purposeful availment of the forum. This includes prosecuting the parent patent of the asserted portfolio in the district, previously filing a lawsuit in the district asserting a related patent (the "Jadoo Litigation"), engaging in litigation-related activities such as mediation in the district, and maintaining other business contacts.
  • Core Dispute: Plaintiff Aylo seeks a declaratory judgment that its adult streaming websites, which allegedly utilize the HTTP Live Streaming (HLS) standard, do not infringe eight U.S. patents owned by Defendant DISH related to adaptive bitrate streaming technology.
  • Technical Context: The technology at issue is adaptive bitrate (ABR) streaming, which enables the delivery of video content over variable-speed networks, such as the internet, by dynamically adjusting video quality to prevent buffering.
  • Key Procedural History: This declaratory judgment action was filed after DISH sent correspondence to Aylo alleging infringement of its ABR patent portfolio, including exemplary claim charts for three of the patents-in-suit. The complaint notes an extensive history of DISH enforcing this patent portfolio against other entities in various district courts and at the International Trade Commission (ITC).

Case Timeline

Date Event
2004-04-30 Earliest Priority Date for Asserted Patents (U.S. Prov. 60/566,831)
2014-10-21 U.S. Patent No. 8,868,772 Issues
2016-08-02 U.S. Patent No. 9,407,564 Issues
2018-01-01 DISH files Jadoo Litigation in N.D. Cal. (approx. date)
2019-11-05 U.S. Patent No. 10,469,554 Issues
2019-11-05 U.S. Patent No. 10,469,555 Issues
2020-08-25 U.S. Patent No. 10,757,156 Issues
2021-03-16 U.S. Patent No. 10,951,680 Issues
2021-05-28 Jadoo Litigation dismissed
2022-10-11 U.S. Patent No. 11,470,138 Issues
2023-03-17 DISH sends initial correspondence to Aylo
2023-06-13 U.S. Patent No. 11,677,798 Issues
2023-07-07 DISH sends exemplary claim charts to Aylo
2023-07-25 Aylo files initial complaint for declaratory judgment
2023-09-06 Aylo files First Amended Complaint

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,469,555 - Apparatus, System, and Method for Multi-Bitrate Content Streaming

  • Patent Identification: U.S. Patent No. 10,469,555, issued November 5, 2019 (’555 Patent).

The Invention Explained

  • Problem Addressed: The patent background describes the challenges of delivering media over packet-switched networks like the internet, including reliability, efficiency, and latency, which can degrade the user experience in traditional streaming or progressive download models (’554 Patent, col. 1:26-2:67).
  • The Patented Solution: The invention addresses these problems by segmenting a media file into a series of smaller, independent data chunks called "streamlets" (’554 Patent, col. 7:37-44). Multiple versions of the content are created, with each version encoded at a different bitrate (e.g., low, medium, high quality). This allows a client device to request sequential streamlets and dynamically switch between quality levels based on real-time network conditions, aiming to provide continuous playback without buffering (’554 Patent, Fig. 3b, Abstract).
  • Technical Importance: This adaptive bitrate streaming architecture became a foundational technology for delivering high-quality video over the variable and often congested public internet, enabling modern on-demand streaming services (Compl. ¶5).

Key Claims at a Glance

  • The complaint identifies asserted independent claim 10 (Compl. ¶102).
  • Key elements of independent claim 10 include:
    • A content player device to stream a video over a network from a server.
    • The device comprises a processor and a memory with instructions.
    • The instructions cause the processor to establish network connections with the server, which can access groups of streamlets.
    • The video is encoded at different bitrates (low, medium, high quality), with at least one stream at no less than 600 kbps.
    • Streamlets encoding the same portion of the video in the low and high quality streams have an equal playback duration.
    • The device selects a specific stream based on a determination to select a higher or lower bitrate version.
    • The device places a streamlet request to the server for the selected stream, receives the requested streamlets, and provides them for playback.

U.S. Patent No. 10,757,156 - Apparatus, System, and Method for Adaptive-Bitrate Shifting of Streaming Content

  • Patent Identification: U.S. Patent No. 10,757,156, issued August 25, 2020 (’156 Patent).

The Invention Explained

  • Problem Addressed: The patent addresses the same challenges of reliability, efficiency, and latency in internet video streaming as the ’554 Patent and other members of the patent family (’156 Patent, col. 1:28-2:67).
  • The Patented Solution: This patent claims an apparatus, such as a media player, that implements the client-side logic for adaptive streaming. The apparatus requests sequential streamlets using HTTP GET requests, repeatedly generates a "factor relating to the performance of the network," and uses this factor to make successive determinations to shift playback quality to achieve continuous playback, adapting to the highest quality stream that is sustainable at that time (’156 Patent, Abstract; col. 17:1-18:24).
  • Technical Importance: This technology defines the client-side intelligence that makes adaptive bitrate streaming functional by constantly monitoring network health and making decisions to switch quality levels.

Key Claims at a Glance

  • The complaint identifies asserted independent claim 1 (Compl. ¶104).
  • Key elements of independent claim 1 include:
    • An apparatus for rendering a video received as a digital stream from a video server.
    • The apparatus comprises a media player configured to stream the video from the server via at least one TCP connection.
    • The video server stores multiple different copies of the video encoded at different bit rates as multiple sets of streamlets, which are aligned in time.
    • The media player streams the video by:
      • Requesting sequential streamlets via HTTP GET requests.
      • Repeatedly generating a factor relating to network performance.
      • Adapting successive determinations to shift playback quality based on the factor to achieve continuous playback.
      • Presenting the video by providing the requested streamlets in ascending start time order.

U.S. Patent No. 11,470,138 - Apparatus, System, and Method for Multi-Bitrate Content Streaming

  • Patent Identification: U.S. Patent No. 11,470,138, issued October 11, 2022 (’138 Patent).
  • Technology Synopsis: The patent describes an end-user station that streams video by selecting from among low, medium, and high quality streams, each composed of "streamlets." The system requires that streamlets encoding the same portion of video at different bitrates have an equal playback duration and that at least one stream is encoded at no less than 600 kbps.
  • Asserted Claims: Independent claim 14 is asserted (Compl. ¶106).
  • Accused Features: The complaint alleges DISH has accused Aylo's HLS-based streaming services of infringing this patent (Compl. ¶144, ¶146).

U.S. Patent No. 10,469,554 - Apparatus, System, and Method for Multi-Bitrate Content Streaming

  • Patent Identification: U.S. Patent No. 10,469,554, issued November 5, 2019 (’554 Patent).
  • Technology Synopsis: The patent claims an end-user station for streaming a live event video. The system involves encoding the live video into multiple streams (low, medium, high quality) of "streamlets" and selecting a specific stream based on a determination to use a higher or lower bitrate.
  • Asserted Claims: Independent claim 16 is asserted (Compl. ¶108).
  • Accused Features: The complaint notes DISH's assertion of this patent in correspondence and prior litigation against others allegedly using the HLS standard (Compl. ¶153, ¶157-158).

U.S. Patent No. 11,677,798 - Apparatus, System, and Method for Multi-Bitrate Content Streaming

  • Patent Identification: U.S. Patent No. 11,677,798, issued June 13, 2023 (’798 Patent).
  • Technology Synopsis: The patent describes a system for adaptive-rate streaming comprising a storage device that stores digital content encoded into a plurality of streams (first, second, third bit rate). Each stream comprises a group of "streamlets" with the same duration that encode the same temporal portion of the content.
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶110).
  • Accused Features: The complaint alleges a controversy exists based on DISH's infringement assertions regarding the HLS standard and the similarity of the ’798 Patent's claims to those of the ’138 Patent, for which DISH provided a claim chart (Compl. ¶165).

U.S. Patent No. 9,407,564 - Apparatus, System, and Method for Adaptive-Rate Shifting of Streaming Content

  • Patent Identification: U.S. Patent No. 9,407,564, issued August 2, 2016 (’564 Patent).
  • Technology Synopsis: The patent describes a method executable by an end-user station to present rate-adaptive streams. The method includes a media player streaming a video by requesting sequential files from a server, automatically requesting subsequent portions based on successive determinations to shift quality, and repeatedly generating a factor indicative of the ability to sustain the stream.
  • Asserted Claims: Independent claim 8 is asserted (Compl. ¶112).
  • Accused Features: The complaint notes DISH's assertion of this patent in prior litigation (including in the N.D. Cal.) and its inclusion in the ABR portfolio asserted against Aylo (Compl. ¶174, ¶178).

U.S. Patent No. 10,951,680 - Apparatus, System, and Method for Multi-Bitrate Content Streaming

  • Patent Identification: U.S. Patent No. 10,951,680, issued March 16, 2021 (’680 Patent).
  • Technology Synopsis: The patent claims a server-side process for streaming video. The process involves storing virtual timelines corresponding to a plurality of streams (low, medium, high quality) composed of streamlets, receiving a request for a virtual timeline from an end-user station, and sending the retrieved timeline to the station.
  • Asserted Claims: Independent claim 22 is asserted (Compl. ¶114).
  • Accused Features: The complaint references DISH's history of asserting the ’680 Patent against other defendants allegedly using the HLS standard as the basis for a justiciable controversy (Compl. ¶186, ¶190).

U.S. Patent No. 8,868,772 - Apparatus, System, and Method for Adaptive-Rate Shifting of Streaming Content

  • Patent Identification: U.S. Patent No. 8,868,772, issued October 21, 2014 (’772 Patent).
  • Technology Synopsis: The patent describes a method for presenting rate-adaptive streams by a media player operating on an end-user station. The method involves requesting sequential files, automatically requesting subsequent portions based on determinations to shift quality, and repeatedly generating factors related to network performance to guide the quality-shifting decisions.
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶116).
  • Accused Features: The complaint alleges that DISH's infringement assertions based on HLS streaming create a controversy regarding this patent, which it identifies as the ultimate parent of all other Asserted Patents (Compl. ¶22, ¶197).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are a collection of adult streaming service websites operated by the Aylo entities, including but not limited to Pornhub.com, RedTube.com, and YouPorn.com (collectively, the "Accused Websites") (Compl. ¶2, ¶8).

Functionality and Market Context

The complaint states that the Accused Websites utilize HTTP Live Streaming (“HLS”), which it describes as an adaptive bit-rate streaming standard, to deliver video content to users (Compl. ¶4, ¶64). The complaint further alleges that the HLS standard was developed by Apple, Inc. (Compl. ¶76). The core accused functionality is the use of this ABR standard for video delivery. Aylo is described in the complaint as an "industry leader and pioneer" in its market (Compl. ¶12). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide the claim charts it references as exhibits. The following summarizes the narrative infringement theories attributed to DISH and Aylo's corresponding non-infringement arguments as detailed in the complaint.

'555 Patent Infringement Allegations

  • DISH's Alleged Infringement Theory: The complaint states DISH provided a claim chart contending that an exemplary Accused Website (Pornhub) infringes claim 10 of the ’555 Patent through its use of the HLS standard (Compl. ¶120-121). The theory appears to map the functions of the HLS standard to the elements of the client-side "content player device" claim.
  • Aylo's Stated Non-Infringement Position: Aylo argues for non-infringement by asserting that its Accused Websites are not a "content player device" and do not include the claimed "processor" and "digital processing apparatus memory device," as Aylo does not provide such hardware to end users (Compl. ¶128-129). Aylo further contends that its websites do not perform the claimed client-side actions of placing requests, receiving streamlets, and providing them for playback (Compl. ¶126). This suggests a central dispute over whether a server-side website operator can directly infringe a claim directed to a client-side device.

'156 Patent Infringement Allegations

  • DISH's Alleged Infringement Theory: The complaint alleges DISH provided a claim chart accusing exemplary aspects of Pornhub's streaming services of infringing claim 1 of the ’156 Patent, again based on the use of the HLS standard (Compl. ¶133-134).
  • Aylo's Stated Non-Infringement Position: Aylo's primary non-infringement argument appears to be one of divided infringement. It argues that it "does not have a single server performing each limitation of claim 1" and that subsequent limitations referring back to "said microprocessor" require that a single microprocessor be capable of performing each of the claimed functions, which is not the case in its system (Compl. ¶140). Aylo also reiterates that its websites do not constitute the claimed "apparatus for rendering a video" or "a media player" (Compl. ¶139).

Identified Points of Contention

  • Scope Questions: A principal question is whether the claimed "content player device" (’555 Patent) and "apparatus for rendering a video" (’156 Patent) can be construed to read on the operations of Aylo's server-side websites. This raises the issue of whether infringement liability can attach to a server operator for claims directed to functionality executed on a client device.
  • Technical Questions: A key technical and legal question for the ’156 Patent is one of divided infringement. The complaint raises the question of whether a single entity or actor performs all steps of the asserted claim, particularly in light of claim language referring back to "said microprocessor" (Compl. ¶140).

V. Key Claim Terms for Construction

"content player device" (’555 Patent, claim 10)

  • Context and Importance: The definition of this term is critical because Aylo's primary non-infringement defense is that it operates websites and does not provide a physical "device" comprising a "processor" and "memory" to end users (Compl. ¶129). Practitioners may focus on this term to determine whether liability for a device claim can extend to a party that provides software or services that cause a user's general-purpose hardware to operate in an infringing manner.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification describes a "client module" that can be configured to play content on an "end user station," which could suggest a software-centric interpretation where the "device" is defined by its function rather than its form (’554 Patent, col. 6:45-48).
    • Evidence for a Narrower Interpretation: The claim explicitly requires the "device" to comprise "a processor" and "a digital processing apparatus memory device," language that points toward a tangible hardware apparatus (’555 Patent, col. 18:40-46). The specification's examples of an "end user station" include physical hardware like "cellular phones, portable gaming systems, and portable computing devices" (’554 Patent, col. 6:49-50).

"An apparatus for rendering a video" (’156 Patent, claim 1)

  • Context and Importance: This term is central for similar reasons as "content player device." Aylo argues its websites are not such an "apparatus" (Compl. ¶139). The analysis will likely focus on whether the claimed "apparatus" is the end-user's hardware/software combination or if it can be interpreted to include the server-side components provided by Aylo.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes many components as functional "modules," which "may be implemented in software for execution by various types of processors" (’156 Patent, col. 5:32-35). This could support an argument that the "apparatus" is defined by the collection of software modules, wherever they may be executed.
    • Evidence for a Narrower Interpretation: The claim recites "a media player operating on the apparatus," which anchors the claimed apparatus to the location where video playback occurs—the user's end device (’156 Patent, col. 18:18-19). This may support an interpretation limiting the "apparatus" to the client side.

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaratory judgment that Aylo has not infringed either directly or indirectly (Compl. ¶18). However, the specific non-infringement arguments detailed in the counts focus on refuting direct infringement by arguing that Aylo's websites do not meet the limitations of the client-side claims. The complaint does not set forth specific facts DISH may have alleged to support the knowledge and intent elements required for indirect infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of entity and liability: can a website operator (Aylo) be held directly liable for infringing claims directed to client-side apparatuses ("content player device," "apparatus for rendering a video") that perform actions like requesting and playing back video, or is DISH's claim properly one of indirect infringement, which would require proof of different elements?
  • A key legal question will be one of divided infringement: does DISH's infringement theory, as applied to the HLS standard, improperly attribute actions performed by end-user devices to Aylo, thereby failing to show that a single actor performs all steps of the asserted method and apparatus claims?
  • A central claim construction question will be one of definitional scope: can terms like "content player device" and "apparatus," which are recited in the claims as comprising processors and memory, be construed to encompass the server-side software and systems provided by a website operator, or are they limited to the end-user's physical hardware?