DCT
1:19-cv-00278
Uniloc 2017 LLC v. Sling TV LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware)
- Defendant: Sling TV L.L.C. (Colorado)
- Plaintiff’s Counsel: Feinberg Day Alberti Lim & Belloli LLP
- Case Identification: 1:19-cv-00278, D. Colo., 04/10/2019
- Venue Allegations: Venue is alleged to be proper in the District of Colorado because Defendant is a Colorado corporation and has committed acts of infringement in the state.
- Core Dispute: Plaintiff alleges that Defendant’s Sling TV streaming service, including its use of H.264 video encoders, infringes four patents related to digital video compression, content aggregation, and user activity tracking.
- Technical Context: The patents relate to core technologies in digital video compression and Over-The-Top (OTT) content delivery, a market defined by the streaming of media over the internet.
- Key Procedural History: The complaint asserts claims from four patents. Public records subsequent to the filing of this complaint indicate that the asserted claims of three of these patents have been cancelled in Inter Partes Review (IPR) proceedings. Specifically, claims 1-16 of the '005 patent were cancelled (IPR2019-01126), claims 1-3 of the '273 patent were cancelled (IPR2019-01363), and claims 1-3 of the '609 patent were cancelled (IPR2019-01367). The validity of the infringement counts for these patents may be a central issue in the litigation.
Case Timeline
| Date | Event |
|---|---|
| 1999-04-30 | '005 Patent Priority Date |
| 2001-03-06 | '118 Patent Priority Date |
| 2003-02-11 | '005 Patent Issue Date |
| 2005-05-17 | '118 Patent Issue Date |
| 2008-08-21 | '273 Patent Priority Date |
| 2008-08-21 | '609 Patent Priority Date |
| 2013-03-26 | '609 Patent Issue Date |
| 2017-08-01 | '273 Patent Issue Date |
| 2019-04-10 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent 6,519,005: Method of Concurrent Multiple-Mode Motion Estimation For Digital Video (Issued Feb. 11, 2003)
The Invention Explained
- Problem Addressed: The patent describes prior art video compression techniques, particularly motion estimation in standards like MPEG, as computationally intensive and inefficient (Compl. ¶23). Specifically, it notes that determining the "optimum prediction mode" for a block of pixels required multiple, sequential search operations before a final motion vector could be generated, making the process slow and expensive ('005 Patent, col. 3:20-43).
- The Patented Solution: The invention proposes a method where the optimal prediction mode is determined as part of the motion estimation process itself, rather than as a prerequisite. It describes a system that can "concurrently searching for the optimum macroblock match... according to each of a plurality of motion prediction modes during the same search operation" ('005 Patent, col. 3:56-62). This consolidation of steps is intended to make video encoding faster and more efficient (Compl. ¶25).
- Technical Importance: The described method aimed to make digital video encoders "simpler, faster, and less expensive," a key objective for advancing the adoption of digital video technologies like DVDs and digital television broadcasting at the time ('005 Patent, col. 1:7-11).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶12).
- Essential elements of claim 1 include:
- comparing pixels of a first pixel array... with pixels of a plurality of second pixel arrays... and concurrently performing motion estimation for each of a plurality of different prediction modes in order to determine which of the prediction modes is an optimum prediction mode;
- determining which of the second pixel arrays constitutes a best match with respect to the first pixel array for the optimum prediction mode; and,
- generating a motion vector for the first pixel array in response to the determining step.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent 6,895,118: Method Of Coding Digital Image Based on Error Concealment (Issued May 17, 2005)
The Invention Explained
- Problem Addressed: The patent addresses drawbacks in handling macroblocks that are excluded (or "skipped") from a video data stream to improve compression (Compl. ¶48). Prior methods either replaced the excluded blocks with constant or black blocks, causing "graphical errors on most receivers," or used extra bits to communicate the addresses of the excluded blocks, which led to "graphical ‘lag’ errors" and reduced bandwidth efficiency ('118 Patent, col. 1:56-67; Compl. ¶50, 53).
- The Patented Solution: The invention proposes inserting a "resynchronization marker" into the data stream immediately following the exclusion of one or more macroblocks ('118 Patent, col. 2:8-12). As depicted in Figure 2 of the patent, this allows a decoder to resynchronize at the correct point in the video sequence without needing inefficient placeholder blocks or address data, thereby reducing the size of the overall data stream while avoiding visual artifacts (Compl. ¶54-55; '118 Patent, col. 5:25-46).
- Technical Importance: The solution offered a more efficient method for managing intentionally skipped or lost data in a compressed video stream, improving both compression ratios and the visual quality of the decoded video ('118 Patent, col. 2:12-15).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶47).
- Essential elements of claim 1 include:
- an estimation step, for macroblocks, of a capacity to be reconstructed via an error concealment method,
- a decision step for macroblocks to be excluded from the coding, a decision to exclude a macroblock from coding being made on the basis of the capacity of such macroblock to be reconstructed,
- characterized in that it also includes a step of inserting a resynchronization marker into the binary data stream after the exclusion of one or more macroblocks.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent 9,721,273: System and Method For Aggregating And Providing Audio And Visual Presentations Via A Computer Network (Issued Aug. 1, 2017)
- Technology Synopsis: The patent addresses the difficulty for internet users in locating relevant content from disparate sources (Compl. ¶77). It describes a method for aggregating multiple collections of presentations—such as locally stored content, content from RSS-like feeds, and other third-party content—for delivery on a "common web page." A key aspect is that the feed data identifies available presentations but does not contain the content itself, which is accessed separately, thereby providing a centralized user interface with improved network efficiency ('273 Patent, col. 12:5-16; Compl. ¶79, 81-82).
- Asserted Claims: Independent Claim 1 (Compl. ¶76).
- Accused Features: The Sling TV service is accused of infringing by aggregating different content collections, such as "Continue Watching," "My Channels" (live TV feeds), and "Holiday Favorites," onto a single user-facing webpage (Compl. ¶88, 90, 92-93).
U.S. Patent 8,407,609: System and Method For Providing And Tracking The Provision Of Audio And Visual Presentations Via A Computer Network (Issued Mar. 26, 2013)
- Technology Synopsis: The patent addresses the challenge of tracking user engagement with digital media that is streamed from a third-party system over which an operator has no direct control (Compl. ¶103). The invention describes a method where a "first computer system" (the operator) provides a webpage with a timer "applet" to the user. This applet periodically sends viewing data back to the operator's system, while the actual media content is streamed directly to the user from a "second computer system" (the third party). This allows the operator to track viewing time and progress for content it does not host ('609 Patent, col. 12:36-45, 13:65-14:8; Compl. ¶104-105).
- Asserted Claims: Independent Claim 1 (Compl. ¶101).
- Accused Features: The Sling TV website (the "first computer system") is alleged to provide a media player (the "applet") that tracks viewing progress using a timer and sends periodic updates back to Sling's servers. The actual video content is alleged to stream from a distinct content delivery network such as MoveTV (the "second computer system") (Compl. ¶111, 114, 117).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant's Sling TV streaming service and its associated products, including its H.264 encoders (Compl. ¶30, 61, 85, 109).
Functionality and Market Context
- The complaint alleges that the Sling TV service is an "app-based TV service that lets you stream your favorite live TV channels over the internet" (Compl. ¶87). Functionally, it is alleged to use H.264 encoders to compress and deliver video streams (Compl. ¶32, 63). The complaint further alleges the service aggregates content from various sources onto a unified interface (Compl. ¶93) and tracks user viewing history for content streamed from third-party CDNs (Compl. ¶111, 117). The complaint references a screenshot of the Sling TV interface, which shows categories like "My Channels," "Continue Watching," and "Holiday Favorites" aggregated on a single screen (Compl. p. 36).
IV. Analysis of Infringement Allegations
'005 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| comparing pixels of a first pixel array... and concurrently performing motion estimation for each of a plurality of different prediction modes in order to determine which of the prediction modes is an optimum prediction mode | The Sling TV H.264 encoders allegedly use different inter-frame prediction modes (inter-modes) and "concurrently perform motion estimation of a macroblock for all inter-modes and select the most optimum prediction mode with least rate distortion cost." | ¶33, ¶34 | col. 8:6-13 |
| determining which of the second pixel arrays constitutes a best match with respect to the first pixel array for the optimum prediction mode | The encoder is alleged to perform a "mode decision to select the most optimum prediction mode with least rate distortion cost." | ¶37, ¶38 | col. 4:15-20 |
| generating a motion vector for the first pixel array in response to the determining step | After the mode decision, the encoder allegedly "calculates the appropriate motion vectors and other data elements represented in the video data stream." | ¶39 | col. 4:20-22 |
Identified Points of Contention
- Scope Questions: A central question is whether the H.264 standard's "mode decision" process, which the complaint alleges is "computationally intensive," meets the "concurrently performing" limitation of the claim (Compl. ¶34, p. 12). The complaint's visual evidence describes the accused process as an "Encoder perform[ing] mode decision to select the mode having the least RD cost" (Compl. p. 12). The court may need to determine if "concurrently" requires simultaneous hardware execution, as depicted in the patent's embodiments (e.g., '005 Patent, Fig. 3), or if it can read on a logically unified but potentially serial software evaluation of different modes.
- Technical Questions: The complaint's allegations rely on general descriptions of the H.264 standard from third-party sources (Compl. ¶32-39). The actual implementation within Sling TV's specific encoders will be a key factual question. Evidence will be required to show that the accused encoders perform estimation for multiple modes in a single, unified search operation, rather than in sequential, distinct steps as described in the patent's background.
'118 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an estimation step, for macroblocks, of a capacity to be reconstructed via an error concealment method | H.264 coding allegedly involves an estimation of whether a macroblock can be reconstructed from neighboring macroblocks by "examining its motion characteristics, and checking to see that the resulting prediction contains no non-zero... quantized transform coefficients." | ¶66 | col. 4:56-65 |
| a decision step for macroblocks to be excluded from the coding, a decision to exclude a macroblock from coding being made on the basis of the capacity of such macroblock to be reconstructed | The H.264 encoders allegedly perform a decision to exclude (skip) a macroblock "made on the basis of its capacity to be reconstructing by inferring its motion properties from neighboring macroblocks, and based on all zero quantized transform coefficients." | ¶67 | col. 3:40-44 |
| characterized in that it also includes a step of inserting a resynchronization marker into the binary data stream after the exclusion of one or more macroblocks | Skipped macroblocks in H.264 are allegedly communicated with an "mb_skip_flag", which the complaint characterizes as a "resynchronization marker at the point where the macroblocks are not coded." A visual diagram shows this "Skip indication" within the slice layer of the data stream. | ¶68, p. 28 | col. 2:8-12 |
Identified Points of Contention
- Scope Questions: The infringement theory hinges on whether the H.264 "mb_skip_flag" constitutes a "resynchronization marker" as contemplated by the patent. A defendant may argue that the term, as used in the patent, refers to a formal packet-level marker with an associated header (e.g., '118 Patent, Fig. 2d), not a single bit flag within a macroblock's data structure. The complaint's own source refers to the flag as an "indication" that a macroblock is to be decoded as "skipped," which may support a narrower reading (Compl. ¶68, p. 27).
- Technical Questions: Does the H.264 standard's condition for skipping a macroblock (predictable motion and zero transform coefficients) equate to the claim's requirement of estimating a "capacity to be reconstructed via an error concealment method"? The specific technical criteria for the decision will be a point of factual dispute.
V. Key Claim Terms for Construction
For the '005 Patent
- The Term: "concurrently performing motion estimation"
- Context and Importance: This term is the central pillar of the '005 patent's infringement allegation. The dispute will likely focus on whether this term is limited to a specific parallel hardware implementation that existed at the time of the invention or is broad enough to cover modern software-based encoders that evaluate multiple modes in a computationally intensive but logically unified process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that motion estimation for different prediction modes may be performed "simultaneously, during the same search for the anchor picture" ('005 Patent, col. 8:11-13). This could be argued to describe a single logical operation, not necessarily requiring parallel hardware.
- Evidence for a Narrower Interpretation: The patent repeatedly emphasizes overcoming the limitations of prior art that performed "sequential motion estimations" (Compl. ¶23) and highlights specific hardware architectures for parallel processing (e.g., '005 Patent, Fig. 3). This may support an interpretation limited to simultaneous physical searches.
For the '118 Patent
- The Term: "resynchronization marker"
- Context and Importance: The case's outcome for the '118 patent depends heavily on whether an H.264 "mb_skip_flag" is construed as a "resynchronization marker." Practitioners may focus on this term because it appears to be the primary point of novelty asserted.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim requires inserting the marker "after the exclusion of one or more macroblocks" ('118 Patent, cl. 1). Plaintiff may argue this broadly covers any data signal, like a flag, that serves to indicate the exclusion.
- Evidence for a Narrower Interpretation: The specification describes the marker ("MA") in conjunction with an "associated header element" ('118 Patent, col. 5:37-46) and distinguishes it from the coded macroblocks themselves. A defendant could argue this limits the term to formal data structuring elements, like video packet headers, not a simple bit flag.
VI. Other Allegations
- Indirect Infringement: The complaint does not include separate counts for indirect or contributory infringement and does not plead specific facts to support the required elements of knowledge and intent, such as alleging that Defendant's user manuals instruct users to perform infringing acts.
- Willful Infringement: The complaint makes a general allegation of infringement "upon actual knowledge" (Compl. p. 1) and includes a prayer for enhanced damages (Compl. ¶122), which implies a claim for willfulness. However, it does not plead specific facts indicating when or how Defendant allegedly became aware of the patents prior to the lawsuit.
VII. Analyst’s Conclusion: Key Questions for the Case
Viability of Claims Post-IPR: The most significant issue, which arises from information outside the complaint, is that the asserted claims of the '005, '273, and '609 patents were cancelled in IPR proceedings after this complaint was filed. A threshold question for the court will be whether these infringement counts can proceed or must be dismissed as moot.
Definitional Scope of Core Terms: The case will turn on claim construction. For the surviving patent ('118) and potentially for the others, the central disputes will be questions of definitional scope: Is an H.264 "mb_skip_flag" a "resynchronization marker" ('118 patent)? Does a software-based "mode decision" process constitute "concurrently performing motion estimation" ('005 patent)? Does a modern web media player qualify as a timer "applet" ('609 patent)?
Evidentiary Sufficiency: The infringement allegations rely heavily on public-facing documents, technical standards, and third-party articles to characterize the accused technology, such as the use of a "movetv.com" server (Compl. p. 45). A key evidentiary question will be whether discovery confirms that Sling TV's proprietary systems operate in the specific manner alleged, or if there is a fundamental mismatch in technical operation between the public standards and the accused implementation.