DCT
1:23-cv-02946
Digital Broadcasting Solutions LLC v. DISH Network LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Digital Broadcasting Solutions, LLC (Texas)
- Defendant: DISH Network, L.L.C and DISH Technologies, L.L.C. (Colorado)
- Plaintiff’s Counsel: Williams Simons & Landis PLLC
- Case Identification: 2:22-cv-00335, E.D. Tex., 08/29/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant DISH maintains regular and established places of business in the district, including numerous authorized retailer locations and at least two physical facilities in Beaumont and McKinney, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s Hopper series of Digital Video Recorders (DVRs) infringes two patents related to methods for time-shifting video content and enabling commercial-skipping features based on time-sensitive rules.
- Technical Context: The technology concerns DVR systems that balance the user's desire to skip commercials with the advertiser's need for their ads to be viewed, particularly for a limited time after a program's initial broadcast when they are most relevant.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the ’710 patent as of November 9, 2018, when the patent was cited in an Information Disclosure Statement during the prosecution of a U.S. patent application assigned to Sling Media Pvt. Ltd., an alleged subsidiary of DISH.
Case Timeline
| Date | Event |
|---|---|
| 2010-11-01 | Priority Date for ’710 and ’122 Patents |
| 2012-05-10 | DISH Network announces 'Auto Hop' feature for its Hopper DVRs |
| 2015-01-06 | U.S. Patent No. 8,929,710 Issued |
| 2017-01-03 | U.S. Patent No. 9,538,122 Issued |
| 2018-11-09 | ’710 Patent allegedly cited in an IDS for a DISH-related application |
| 2022-08-29 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,929,710 - "System and Method for Time Shifting at Least a Portion of a Video Program," issued January 6, 2015
The Invention Explained
- Problem Addressed: The patent identifies a conflict in time-shifted viewing: information like advertisements or news tickers can become outdated and irrelevant, but allowing users to skip this "auxiliary data" indiscriminately "can decrease the value of the program to the content owner, the content provider and advertiser" (’710 Patent, col. 1:45-49).
- The Patented Solution: The invention proposes a DVR system with a dual-mode playback logic tied to the passage of time. The DVR is configured to enforce viewing of a program in its entirety if played back within a "first period of time" after broadcast (’710 Patent, col. 12:1-4). However, after this period lapses, the user can place the DVR into a "second playback state" (a commercial-skipping mode) to watch only a portion of the program, such as the primary content without the commercials (’710 Patent, col. 12:5-17). This solution aims to protect the value of time-sensitive ads while still offering users a commercial-skipping option after that value has "diminished" (’710 Patent, Abstract).
- Technical Importance: This approach provided a technical framework to mediate the competing interests of consumers, who desired ad-free viewing, and advertisers, whose business models depended on ad delivery, in the context of increasingly popular DVR technology (Compl. ¶43).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶58).
- Essential elements of Claim 1 include:
- A DVR with a tuner, memory, controller, and processor.
- The DVR receives a video program with first, second (e.g., commercial), and third portions.
- A controller receives commands to change between a first (non-skipping) and second (skipping) playback state.
- A processor is configured to provide the program in its entirety if a play command is received during a "first period of time."
- The processor is also configured to provide the program in its entirety if a play command is received during a "second period of time" and the DVR is in the first playback state.
- The processor is configured to provide only a portion of the program (e.g., skipping the second portion) if a play command is received during the "second period of time" and the DVR is in the second playback state.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,538,122 - "System and Method for Time Shifting at Least a Portion of a Program," issued January 3, 2017
The Invention Explained
- Problem Addressed: The ’122 Patent addresses the same fundamental problem as the ’710 Patent regarding the tension between user convenience and advertiser value in time-shifted television (Compl. ¶21). It further addresses the technical challenge of efficiently recording multiple programs, noting the limited number of tuners available in a typical DVR (Compl. ¶33).
- The Patented Solution: The invention claims a DVR that implements the same time-based, dual-state playback logic as the ’710 patent but adds a specific technical implementation for acquiring content. The DVR uses a single tuner to receive a plurality of video programs transmitted simultaneously on a single channel (’122 Patent, col. 12:61-64). This allows the DVR to record multiple primetime shows, for example, without tying up other tuners that the user might need for watching or recording other live programs (’710 Patent, col. 8:59-67, incorporated by reference into the '122 patent).
- Technical Importance: The invention claims to improve DVR efficiency by using a single tuner to acquire multiple programs, a valuable feature when tuner resources are limited, while still applying the patented time-based commercial-skipping rules (Compl. ¶33).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶79).
- Essential elements of Claim 1 include:
- A DVR with a tuner, memory, controller, and processor.
- The tuner is configured to receive a plurality of video programs transmitted at the same time on a single channel.
- A controller receives commands, including a "third command" that instructs the DVR to receive and store the plurality of video programs.
- The processor implements the same two-period, two-state logic as Claim 1 of the ’710 patent for one of the stored programs.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused products are DVRs including the DISH Hopper, DISH Hopper 2, DISH Hopper 3, Hopper with Sling, and Hopper Duo (collectively, the "Accused Products") (Compl. ¶45).
Functionality and Market Context
- The complaint focuses on two key features of the Accused Products:
- Primetime Anytime: This feature is alleged to use a single tuner to automatically record and download all primetime shows from major broadcast networks, freeing up other tuners for the user (Compl. ¶46). The downloaded programs are available for up to eight days after their original air date (Compl. p. 15).
- AutoHop: This feature allows a user to automatically skip commercials. The complaint alleges that AutoHop can only be enabled for a program after a certain period of time has passed since its initial broadcast, and this period may vary by network based on contracts with advertisers (Compl. ¶50). This functionality is alleged to create a time-based distinction in when commercials can be skipped, with the system guaranteeing commercial viewing for an initial period (Compl. ¶50). A screenshot from the DISH website describes the feature by stating, "At the first commercial break, you'll be given the option to skip commercials throughout the program" (Compl. p. 16).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,929,710 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a controller configured to receive commands from a user ... wherein a first command changes said DVR from a first playback state to a second playback state, and a second command initiates playback | The user selects "Yes" to enable AutoHop (first command) and "Watch" to initiate playback (second command). A screenshot shows the prompt, "Would you like to enable AutoHop™ for this event?" (Compl. p. 22). | ¶¶63, 64 | col. 11:57-60 |
| at least one processor configured to (i) provide said video program in its entirety ... if said second command is received during a first period of time | Recently recorded programs do not display a "red kangaroo" icon, which Plaintiff alleges indicates that commercials cannot be skipped. Therefore, these programs, received during the "first period of time," can only be played in their entirety. | ¶65 | col. 11:61-65 |
| (ii) provide said video program in its entirety ... if said second command is received during a second period of time and said DVR is in said first playback state | For older programs (in the "second period of time"), if the user selects "No Thanks" to the AutoHop prompt (remaining in the first playback state), the program is provided in its entirety. | ¶66 | col. 12:1-4 |
| (iii) provide only a portion of said video program ... if said second command is received during a second period of time and said DVR is in said second playback state, said portion ... including at least said first and third portions | For older programs identified with a "red kangaroo" icon, if the user selects "Yes" to enable AutoHop (entering the second playback state), the program is provided without commercials (the second portion is skipped). A screenshot shows the red kangaroo icon on a program tile (Compl. p. 21). | ¶67 | col. 12:5-12 |
- Identified Points of Contention:
- Scope Question: The patent describes the "first period of time" in the context of the diminishing value of an advertisement (e.g., "less than one week") (’710 Patent, col. 12:6-9). The complaint alleges DISH's blackout period "may vary by network" based on contracts (Compl. ¶50). This raises the question of whether a variable, contractually-determined blackout period meets the "first period of time" limitation as defined by the patent's specification.
- Technical Question: The complaint's theory relies on the presence or absence of a "red kangaroo" icon to prove whether a program is in the "first" or "second" period of time (Compl. ¶65). A key question will be what evidence demonstrates that this icon is a direct and necessary indicator of the claimed time periods, rather than being related to other factors like content licensing or technical availability.
U.S. Patent No. 9,538,122 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a tuner for receiving a plurality of video programs, wherein (i) said plurality of video programs are transmitted at the same time on a single channel | The "Primetime Anytime" feature is alleged to use a single tuner to download all primetime shows from the major networks, which are transmitted concurrently. | ¶¶46, 81 | col. 12:61-64 |
| a controller configured to receive commands from a user ... and a third command instructs said DVR to receive and store said plurality of video programs | The user selects "DVR" and then "PrimeTime Anytime" from the interface, which the complaint alleges is the "third command" that instructs the device to receive and store the programs. A screenshot shows the user interface for selecting "PrimeTime Anytime" (Compl. p. 20). | ¶¶82, 84 | col. 12:14-19 |
| at least one processor configured to (i) provide said one of said plurality of video programs in its entirety ... during a first period of time | Same infringement theory as the ’710 patent, based on the alleged inability to use AutoHop for recently recorded programs (those without the "red kangaroo" icon). | ¶86 | col. 12:21-26 |
| (iii) provide only a portion of said one of said plurality of video programs ... during a second period of time if said DVR is in said second playback state | Same infringement theory as the ’710 patent, based on the user enabling AutoHop for older programs (those with the "red kangaroo" icon). A screenshot from the user interface shows the prompt to enable AutoHop (Compl. p. 29). | ¶88 | col. 12:33-47 |
- Identified Points of Contention:
- Scope Question: Does the term "single channel" in the patent, which could refer to a specific broadcast frequency or data stream, read on the mechanism DISH uses for its "Primetime Anytime" feature? The complaint alleges the feature uses a "single tuner" but is less specific about the "single channel" transmission method.
- Technical Question: Claim 1 requires a specific "third command" that "instructs the DVR to receive and store the plurality of video programs." The complaint maps this to the user's one-time setup of the "Primetime Anytime" feature (Compl. ¶82). A point of contention may be whether this setup action constitutes a "command" in the sense claimed by the patent, which could be interpreted as a more dynamic, session-based instruction.
V. Key Claim Terms for Construction
- The Term: "first period of time" (’710 Claim 1; ’122 Claim 1)
- Context and Importance: The existence of this initial, mandatory-viewing period is the cornerstone of the alleged invention and the infringement theory. Its definition will determine whether DISH's time-gated "AutoHop" feature falls within the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a rigid definition, offering an example of "less than one week" (’710 Patent, col. 12:6-7). This flexibility may support an argument that any initial period where skipping is disabled, regardless of how it is determined (e.g., by contract), meets the limitation.
- Evidence for a Narrower Interpretation: The specification repeatedly links the time period to the concept that "auxiliary data" (e.g., an ad) loses value over time (’710 Patent, Abstract). A defendant might argue the term requires the period to be based on the intrinsic value of the content, not an arbitrary, network-by-network contractual obligation.
- The Term: "second playback state" (’710 Claim 1; ’122 Claim 1)
- Context and Importance: This term defines the "commercial skipping state." The infringement reading depends on the user's action of enabling "AutoHop" being equivalent to entering this claimed state. Practitioners may focus on this term because the nature of the "state" (e.g., persistent vs. temporary) is a common point of dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim requires only that a "first command changes said DVR" into the state (’710 Patent, col. 11:58-59). This suggests any user-initiated change that enables skipping could suffice.
- Evidence for a Narrower Interpretation: A defendant could argue that a "state" implies a more persistent condition of the DVR, whereas the accused feature appears to be a program-by-program option the user selects via a prompt (’710 Patent, col. 12:5-17; Compl. p. 22). This raises a question of whether a temporary, per-program setting constitutes the claimed "playback state."
VI. Other Allegations
- Indirect Infringement: The complaint alleges that DISH induced infringement by advising, advertising, and distributing instructions (e.g., via its website and user interfaces) that guide end-users to use the "Primetime Anytime" and "AutoHop" features in an infringing manner (Compl. ¶¶73, 93).
- Willful Infringement: The complaint alleges willfulness based on both post-suit knowledge from the filing of the complaint and, more significantly, pre-suit knowledge. The pre-suit knowledge allegation is based on the ’710 patent having been cited in an Information Disclosure Statement during the prosecution of a patent application that was assigned to Sling Media, which the plaintiff asserts is a DISH subsidiary (Compl. ¶72).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the patents' "first period of time," described in the context of diminishing ad value, be construed to cover the variable, contractually-determined blackout periods allegedly used by DISH's "AutoHop" feature?
- A key evidentiary question will be one of functional mapping: does the accused system's operational logic, specifically the "red kangaroo" icon and the "Enable AutoHop" prompt, directly correspond to the patents' claimed two-period, two-state system, or is there a material difference in their technical operation?
- A central question for damages will be pre-suit knowledge: does the citation of the ’710 patent in an IDS for an application owned by a DISH subsidiary create a sufficient factual basis to establish that DISH itself had knowledge of the patent, thereby supporting the claim for willful infringement?