DCT

1:19-cv-00144

DISH Tech LLC v. Univision Communications Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-00144, D. Del., 01/25/2019
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is incorporated in Delaware and transacts business within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Univision NOW streaming service infringes four patents related to adaptive bitrate streaming (ABS) technology.
  • Technical Context: Adaptive bitrate streaming is a core technology for modern internet video delivery, enabling services to adjust video quality in real-time to match a user's available network bandwidth, thereby reducing buffering and improving the viewing experience.
  • Key Procedural History: The complaint alleges that the patents-in-suit were originally developed and owned by MOVE Networks, Inc. Plaintiff further alleges that it put Defendant on notice of infringement on July 25, 2018, during business negotiations regarding content carriage, and that Defendant continued to offer the accused service after this warning.

Case Timeline

Date Event
2004-04-30 Earliest Priority Date for all Patents-in-Suit
2010-10-19 U.S. Patent No. 7,818,444 Issues
2013-03-19 U.S. Patent No. 8,402,156 Issues
2015-01-01 Sling TV Launch (approximate, "beginning of 2015")
2015-06-30 U.S. Patent No. 9,071,668 Issues
2016-08-02 U.S. Patent No. 9,407,564 Issues
2018-05-01 Univision NOW Launch (approximate, "May of 2018")
2018-07-25 Plaintiff Alleges Defendant Put on Notice of Infringement
2019-01-25 Complaint Filed

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

U.S. Patent No. 7,818,444 - Apparatus, system, and method for multi-bitrate content streaming

  • Issued: October 19, 2010.

The Invention Explained

  • Problem Addressed: The patent addresses the challenges of delivering high-quality streaming media over unreliable packet-switched networks like the Internet, where prior art solutions forced users to choose between long download times for high-quality video or a poor, low-resolution streaming experience prone to buffering and interruptions (Compl. ¶¶ 13-15; ’444 Patent, col. 2:4-32).
  • The Patented Solution: The invention describes a system for adaptive-rate content streaming where a source video is segmented into a sequence of smaller files, or "streamlets" (’444 Patent, col. 7:1-4). For each time-indexed streamlet, multiple versions are encoded at different bitrates. This creates sets of streamlets that represent the same portion of the video but at different quality levels (’444 Patent, col. 7:15-25). A client device can then request streamlets one by one, selecting the bitrate for the next streamlet based on then-current network conditions, allowing for seamless quality shifts during playback (Compl. ¶ 18).
  • Technical Importance: This client-centric, HTTP-based approach enabled reliable, high-quality video streaming over the public internet by adapting to fluctuating bandwidth, which significantly improved the user experience and reduced publisher costs by leveraging standard web servers (Compl. ¶ 19).

Key Claims at a Glance

  • The complaint asserts at least independent claim 24 (’444 Patent, col. 20:22 - col. 21:5).
  • Claim 24 is a method claim with the following essential elements:
    • capturing a single video;
    • segmenting the video into sequential "raw streamlets" that collectively represent the entire video but individually represent only a portion starting at a unique time index;
    • encoding each raw streamlet to generate a set of encoded streamlets, one for each supported bitrate, where all streamlets in a set have the same time index and are stored as separate, independently requestable content files;
    • receiving requests from end user stations over the Internet for different separate content files from different sets; and
    • transmitting the requested content files, where the end user station initiates quality shifts by requesting a file with a different bitrate for a subsequent time index.
  • The complaint reserves the right to assert additional claims (Compl. p. 11 n.1).

U.S. Patent No. 8,402,156 - Apparatus, system, and method for multi-bitrate content streaming

  • Issued: March 19, 2013.

The Invention Explained

  • Problem Addressed: As part of the same patent family, the ’156 Patent addresses the same fundamental problem of delivering high-quality streaming video over networks with variable bandwidth, where users suffered from buffering, latency, and poor quality (’156 Patent, col. 2:5-39).
  • The Patented Solution: The patent describes a method for preparing videos for adaptive-rate streaming. The method involves receiving a selected video and creating a plurality of different copies, each encoded at a different bitrate. Each copy is then divided into a plurality of time-aligned "streamlets," with each streamlet being a separate, independently playable content file (’156 Patent, Abstract; col. 6:49-67). This structure allows an end-user station to initiate shifts in playback quality by requesting streamlets from different copies as network conditions change.
  • Technical Importance: This method of content preparation is foundational to adaptive bitrate streaming, as it creates the library of interchangeable, multi-quality video segments that enables a client player to dynamically manage the user's viewing experience (Compl. ¶¶ 18-19).

Key Claims at a Glance

  • The complaint asserts at least independent claim 15 (’156 Patent, col. 16:11-44).
  • Claim 15 is a method claim with the following essential elements:
    • receiving a selected video for generating streamlets; and
    • creating a plurality of different copies of the video, where each copy is encoded at a different bitrate and divided into a plurality of streamlets;
    • wherein the time indexes of the streamlets are the same for the different copies; and
    • wherein each streamlet is a separate, independently playable content file to allow an end user station to initiate shifts in playback quality through requests for separate content files.
  • The complaint reserves the right to assert additional claims (Compl. p. 11 n.1).

Multi-Patent Capsule: U.S. Patent No. 9,071,668

  • Patent Identification: U.S. Patent No. 9,071,668, Apparatus, system, and method for multi-bitrate content streaming, issued June 30, 2015 (Compl. ¶ 9).
  • Technology Synopsis: The ’668 Patent claims a method performed by a content player on an end-user device. The player requests a stream from a server that stores multiple copies of the video at different bitrates, with each copy divided into segments. The player adapts its subsequent segment requests to shift between the higher or lower quality copies based on its own successive determinations (Compl. ¶ 90; ’668 Patent, col. 17:1-36).
  • Asserted Claims: Independent claim 16 (Compl. ¶ 90).
  • Accused Features: The accused functionality is the Univision NOW service, wherein the end-user application receives video segments and adapts its requests for subsequent segments to manage playback quality based on network conditions (Compl. p. 23).

Multi-Patent Capsule: U.S. Patent No. 9,407,564

  • Patent Identification: U.S. Patent No. 9,407,564, Apparatus, system, and method for adaptive-rate shifting of streaming content, issued August 2, 2016 (Compl. ¶ 10).
  • Technology Synopsis: The ’564 Patent claims a method executed by an end-user station for presenting rate-adaptive streams. The method involves a media player repeatedly generating a "factor" indicative of the network's performance and making determinations to "upshift" or "downshift" playback quality when this factor crosses predefined thresholds (Compl. ¶ 120; ’564 Patent, col. 14:15-62).
  • Asserted Claims: Independent claim 8 (Compl. ¶ 120).
  • Accused Features: The accused functionality is the Univision NOW service, where the end-user application adapts requests for video segments based upon the quality of the network connection (Compl. p. 29).

III. The Accused Instrumentality

Product Identification

  • The accused products and services are "Univision NOW, the Univision app, and Univision Deportes services and related applications," collectively referred to as "Univision NOW" (Compl. ¶ 25).

Functionality and Market Context

  • The complaint describes Univision NOW as a "digital video subscription service" that offers live and on-demand streaming of Spanish-language content (Compl. ¶¶ 25-26). The core accused functionality is its use of adaptive bitrate streaming, whereby the service "adapts requests for segments from a set of segments with the same content but varying quality based upon the quality of the network connection" (Compl. p. 11). The complaint positions Univision NOW, which it alleges launched in May 2018, as a direct competitor to Plaintiff's Sling TV service in the "Over the Top" (OTT) market (Compl. ¶ 30). The complaint includes a screenshot of the Univision NOW desktop platform, which promotes live soccer events (Compl. p. 9).

IV. Analysis of Infringement Allegations

7,818,444 Infringement Allegations

Claim Element (from Independent Claim 24) Alleged Infringing Functionality Complaint Citation Patent Citation
capturing a single video; Univision’s service captures live and on-demand video programs for streaming. ¶28 col. 8:41-54
segmenting the single video and generating a plurality of sequential raw streamlets... Univision’s service segments the captured video program into smaller files for adaptive streaming. ¶28; p. 11 col. 7:59-65
encoding each raw streamlet to generate... a set including an encoded streamlet for each bitrate... wherein each of the encoded streamlets in each of the sets is stored as a separate content file... Univision’s service creates and stores multiple versions of each video segment at varying quality levels (bitrates) to facilitate adaptive streaming. ¶28; p. 11 col. 8:15-26
receiving requests from the end user stations over the Internet for different ones of the separate content files from different ones of the sets; and Univision’s servers receive requests from the Univision NOW application for specific video segments. ¶28; p. 11 col. 8:55-61
transmitting the requested ones of the separate content files... wherein each of the end user stations initiate each of the shifts between the different bit rates... through a request for the separate content file storing a different bit rate... Univision’s servers transmit the requested video segment, and the Univision NOW application initiates a shift in quality by requesting a subsequent segment at a different bitrate based on network conditions. ¶28; p. 11 col. 20:10-21

8,402,156 Infringement Allegations

Claim Element (from Independent Claim 15) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving a selected one of the videos for generating streamlets for adaptive-rate content streaming; and Univision’s service receives selected video programs to prepare them for its adaptive streaming service. ¶60; p. 17 col. 6:49-53
creating a plurality of different copies of the same selected video, wherein each of the different copies is encoded at a different bit rate and is divided into a plurality of streamlets... Univision’s service creates multiple versions of the video program at different quality levels and divides them into segments for adaptive streaming. ¶60; p. 17 col. 6:58-67
wherein the time indexes of the streamlets are the same for the different copies... The video segments created by Univision’s service for different quality levels are time-aligned to allow for seamless switching between them. ¶60; p. 17 col. 7:20-22
wherein each of the streamlets... is a separate content file that is independently playable by the end user station to thereby allow the end user station to initiate shifts in playback quality... The video segments are stored as separate files that the Univision NOW application can independently request to shift quality during playback. ¶60; p. 17 col. 16:35-44

Identified Points of Contention

  • Evidentiary Questions: The asserted claims for the ’444 and ’156 patents recite server-side method steps (e.g., "capturing," "segmenting," "encoding," "creating"). A central issue may be what evidence Plaintiff can obtain through discovery to demonstrate that Defendant's internal content-processing workflow performs these specific steps as claimed.
  • Scope Questions: A potential dispute may arise over whether the term "initiate," as recited in claim 24 of the ’444 Patent, requires that the bitrate selection decision be made exclusively by the client device. The analysis may question whether Defendant's system architecture involves server-side logic that contributes to or dictates quality shifts, which could distinguish it from the claimed client-driven method.

V. Key Claim Terms for Construction

The Term: "streamlet"

  • Context and Importance: This term is the fundamental unit of content in the claimed inventions. Its definition is critical for determining whether the video segments used by the Univision NOW service fall within the scope of the claims. Practitioners may focus on this term because infringement will depend on whether Univision's video segments possess the structural and functional characteristics of a "streamlet" as described in the patents, including being an "independent media object" with a "unique time index" ('444 Patent, col. 7:1-6).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states a streamlet is "any sized portion of the content file" and that it may be divided according to file size instead of a time index and duration, which could support a more flexible definition (’444 Patent, col. 7:1-2; col. 7:12-14).
    • Evidence for a Narrower Interpretation: The specification consistently describes streamlets as having a "unique time index in relation to the beginning of the content" and a specific duration (e.g., "two seconds"), and as being part of a "set" of streamlets with "identical time indices and durations but varying bitrates" (’444 Patent, col. 7:4-8; col. 7:18-20). This language may support a narrower definition requiring specific time-based attributes.

The Term: "initiate each of the shifts" (by the "end user station")

  • Context and Importance: This phrase from claim 24 of the ’444 Patent allocates control over quality shifting to the client device. Its construction will be central to determining whether the decision-making process in the accused Univision NOW system aligns with the claimed invention. Practitioners may focus on this term because the patents' background emphasizes the advantages of moving the decision-making "to the client" (Compl. ¶ 19), suggesting intent is a key inventive concept.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language only requires the end user station to "initiate" the shift, which could be interpreted to allow for some level of server-side cooperation or confirmation, as long as the initial impetus for the shift originates at the client.
    • Evidence for a Narrower Interpretation: The specification describes the benefits of the client being "in a better position to determine the appropriate streamlet by measuring the actual throughput of the network at its point of reception" and how this "eliminates the need for a customized video server" (Compl. ¶ 19). This context suggests a system where the client has primary, if not sole, control over the decision, potentially supporting a narrower construction that excludes systems with significant server-side influence on quality selection.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges inducement of infringement under 35 U.S.C. § 271(b), asserting that Defendant actively encourages its customers to use the Univision NOW service for adaptive-rate streaming as claimed in the patents. This is based on allegations of Defendant providing training and promotional materials that instruct users on how to watch content, thereby causing direct infringement by the users (Compl. ¶¶ 39, 41). The complaint also pleads contributory infringement under § 271(c), alleging Univision NOW is a material part of the invention, is not a staple article of commerce, and is known to be especially adapted for infringing use (Compl. ¶ 50).

Willful Infringement

  • The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. It specifically alleges that Defendant was "put on notice of its infringement of the ABS Patents on July 25, 2018" during business negotiations and subsequently "continued to provide OTT service... that DISH warned was infringing" (Compl. ¶ 30). Willfulness is also alleged based on knowledge gained from the complaint itself (Compl. ¶ 33).

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

  • A core issue will be one of evidentiary proof: can Plaintiff demonstrate, through discovery of Defendant's internal systems, that the server-side architecture and content preparation workflows of the Univision NOW service perform the specific steps of segmenting, encoding, and storing video files as recited in the asserted method claims?
  • A key question of claim construction will be the degree of client-side control required by terms such as the end-user station "initiat[ing] each of the shifts." The case may turn on whether this language can be construed to cover the specific client-server decision-making protocol of the accused system, or if Defendant can show its system employs a technically distinct control logic.
  • A central question for damages will be one of willfulness: given the allegation that Defendant received explicit notice of infringement during prior business negotiations, the court will likely examine whether its continued operation of the accused service rises to the level of egregious conduct required to find willful infringement and potentially award enhanced damages.