DCT

1:17-cv-00102

Blackbird Tech LLC v. Starz Entertainment LLC

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-00102, D. Del., 02/01/2017
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant STARZ transacts business in the district, including marketing and selling its services to Delaware residents, and has allegedly committed acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s STARZ App, which enables subscribers to download video content for offline viewing, infringes a patent related to automated systems for digital data duplication.
  • Technical Context: The technology concerns networked systems that automate the process of receiving customer orders for digital content and duplicating that content from a central archive onto user-accessible media.
  • Key Procedural History: The patent-in-suit, U.S. Patent No. 7,174,362, underwent two separate ex parte reexaminations, resulting in the issuance of certificates in 2013 and 2014. These proceedings amended several claims, including asserted claim 2, and added new claims, including asserted claim 10. Such a history may significantly inform claim construction and could introduce arguments related to prosecution history estoppel.

Case Timeline

Date Event
2000-11-21 U.S. Patent No. 7,174,362 Priority Date
2007-02-06 U.S. Patent No. 7,174,362 Issue Date
2013-02-01 First Reexamination Certificate (C1) Issued
2014-03-18 Second Reexamination Certificate (C2) Issued
2017-02-01 Complaint Filing Date

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

U.S. Patent No. 7,174,362 - "Method and System for Supplying Products from Pre-Stored Digital Data in Response to Demands Transmitted via Computer Network," Issued February 6, 2007

The Invention Explained

  • Problem Addressed: The patent's background describes the inefficiency and high labor costs associated with manually supervising the duplication of digital data onto physical media like compact disks (CDs), a process that required operators to prepare, copy, and inspect disks ('362 Patent, col. 1:33-44).
  • The Patented Solution: The invention proposes an automated system to manage the entire duplication process, from order to delivery. A central server receives customer requests over a network, creates a log of jobs, schedules production, and directs a plurality of "output devices" (disclosed as CD writers) to retrieve data from a central archive and "burn" it onto blank physical media ('362 Patent, Abstract; col. 2:1-12). The system is designed to function without human supervision.
  • Technical Importance: The described technology aimed to solve a business logistics problem by automating the on-demand manufacturing of physical media, thereby reducing labor costs and eliminating the need to maintain a physical inventory of pre-made products ('362 Patent, col. 2:13-17).

Key Claims at a Glance

  • The complaint asserts independent claims 2 and 10 (Compl. ¶18).
  • Independent Claim 2 (as amended by first reexamination): A computer-implemented method of digital data duplication with key elements including:
    • taking requests at one or more user interfaces and transmitting them to a computer;
    • assigning requests to one of a plurality of output devices;
    • executing a duplication process via a computer comprising three modules:
      • a first module to create a task log from incoming requests;
      • a second module to store necessary data, including an "expandable indexed archive" of content and a "resource file for each of said output devices"; and
      • a third module to download a subset of data to an output device and command it to "transfer said subset onto blank media."
  • Independent Claim 10 (as added by first reexamination): A computer-implemented method similar to claim 2, which also includes the step of:
    • "tracking the hard drive capacity remaining in said output device."
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are the STARZ App and the associated STARZ Service (Compl. ¶5, 11).

Functionality and Market Context

  • The STARZ App allows subscribers to download movies and TV episodes from STARZ's library to a mobile device for later offline viewing (Compl. ¶11). The complaint alleges STARZ maintains an "expandable indexed archive" of content that is available for download (Compl. ¶12). Users initiate a download by selecting an icon within the app, which causes the selected content to be stored on the user's mobile device (Compl. ¶13-14). The complaint does not contain allegations regarding the product's specific market share or positioning.

IV. Analysis of Infringement Allegations

’362 Patent Infringement Allegations

Claim Element (from Independent Claims 2 & 10) Alleged Infringing Functionality Complaint Citation Patent Citation
...taking requests at one or more user interfaces... STARZ App subscribers make download requests by selecting a download icon. This is shown in a screenshot of the app's user interface instructing the user to "Use the ↓ to download titles to watch offline" (Compl. ¶13). ¶13 col. 6:49-51
...assigning each of said requests to one of a plurality of output devices... The complaint alleges the user's mobile device is the "output device." The request from the app is processed by STARZ's service, which then results in the download to that specific mobile device (Compl. ¶11, 14). ¶11, ¶14 col. 5:15-17
...at least one first module configured to create a task log based on incoming requests... STARZ allegedly creates a task log based on download requests, as evidenced by the downloaded content appearing on the "My List" page and STARZ's collection of user interaction data via scripts (Compl. ¶15). ¶15 col. 3:9-11
...at least one second module configured to store...an expandable indexed archive of digital data...and a resource file for each...output device STARZ allegedly stores an "expandable indexed archive of movies and TV episodes" (Compl. ¶12). The "resource file" is allegedly met by STARZ maintaining information about the subscriber's mobile device, such as download or content rating limitations, as shown in a "Parental Controls" screenshot (Compl. ¶16). ¶12, ¶16 col. 7:26-40
...at least one third module configured to...command said output device to transfer said subset onto blank media... After a request is processed, the requested content is stored on the subscriber's mobile device, which the complaint alleges constitutes transferring data onto "blank media" (i.e., the device's available storage) (Compl. ¶14). ¶14 col. 7:32-40
...tracking the hard drive capacity remaining in said output device... (Claim 10 only) STARZ tracks the storage capacity of the user's mobile device. The complaint provides a screenshot of an "Out of Space" error message displayed by the app when a download exceeds available device storage (Compl. ¶17). ¶17 col. 8:47-49
  • Identified Points of Contention:
    • Scope Questions: A primary issue is whether the term "output device," as used in the patent, can be construed to cover a subscriber's personal mobile device. The patent's specification consistently describes the "output devices" as industrial "CD Writers" or "CD-R writing machines" that are part of a centralized production facility (e.g., ’362 Patent, Abstract; Fig. 2). A similar question arises for the term "blank media," which the patent describes as "blank CD-Rs" ('362 Patent, col. 7:36-37), and whether it can read on available digital storage space on a phone or tablet.
    • Technical Questions: The complaint maps STARZ's features to the claimed three-module structure. A technical question is whether the STARZ system possesses the distinct "first," "second," and "third" modules as claimed, or if it operates as a more integrated system. Further, it is a question whether the data STARZ maintains about a user's device (e.g., parental controls) meets the specific definition of a "resource file" taught in the patent, which includes technical data like the "number of drives" and "number of blank recording mediums pre-loaded" ('362 Patent, cl. 3).

V. Key Claim Terms for Construction

  • The Term: "output device"

    • Context and Importance: The construction of this term is fundamental to the infringement analysis. If the term is limited to the industrial CD duplicators disclosed in the specification, the infringement case against the STARZ App (which downloads to user devices) may not be sustainable. Practitioners may focus on this term because of the stark difference between the patent's disclosed embodiment and the accused technology.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself refers generically to "a plurality of output devices" without explicitly limiting the term to a CD writer ('362 Patent, cl. 2).
      • Evidence for a Narrower Interpretation: The specification, including the abstract, detailed description, and figures, consistently and exclusively describes the "output device" as a "CD-R writing machine" or "CD Writer" used for automated physical media production ('362 Patent, Abstract; col. 7:18-24).

  • The Term: "blank media"

    • Context and Importance: This term is critical because infringement requires the accused system to "transfer said subset onto blank media." The dispute will center on whether this can mean writing a file to a mobile device's existing storage.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term "media" is not inherently limited to physical, removable objects in all contexts.
      • Evidence for a Narrower Interpretation: The specification explicitly equates "blank media" with "blank CD-Rs" that are "pre-loaded" into the output device, strongly suggesting a physical, discrete item ('362 Patent, col. 7:36-37; cl. 3).

VI. Other Allegations

The complaint does not contain specific counts or factual allegations for indirect infringement or willful infringement.

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

  • A core issue will be one of definitional scope: can the claim terms "output device" and "blank media," which are rooted in the patent's disclosure of an automated system for producing physical CDs, be construed broadly enough to encompass a subscriber's personal mobile device and its digital storage within a video-on-demand streaming service?
  • A second key question will be one of technical mapping: assuming a broad construction, does the evidence show that the STARZ service architecture is organized into the specific three-module structure required by the claims, and does the device information it tracks (e.g., parental controls) satisfy the patent's detailed definition of a "resource file"?
  • Finally, a central legal question will be the impact of the patent's extensive reexamination history: how will the arguments and claim amendments made to the U.S. Patent and Trademark Office to secure the patentability of the asserted claims limit the scope of those claims and the plaintiff's ability to argue for infringement, particularly under the doctrine of equivalents?