1:19-cv-01031
NexStep Inc v. Comcast Cable Communications LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NexStep, Inc. (Delaware)
- Defendant: Comcast Cable Communications, LLC (Delaware)
- Plaintiff’s Counsel: Potter Anderson & Corroon LLP; Kramer Levin Naftalis & Frankel LLP
- Case Identification: 1:19-cv-01031, D. Del., 06/03/2019
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is incorporated in the state and maintains substantial operations there, including Xfinity stores and customer care centers.
- Core Dispute: Plaintiff alleges that Defendant’s Xfinity-branded services and associated hardware (e.g., set-top boxes, voice remotes) and software (e.g., smartphone apps) infringe nine patents related to systems for controlling and integrating consumer electronic devices via a "tethered" remote control architecture.
- Technical Context: The technology concerns a client-server model for consumer electronics control, where a low-cost handheld device (the remote) offloads complex processing tasks to a more powerful central console (e.g., a set-top box or gateway), enabling advanced features like voice control without requiring expensive hardware in the remote itself.
- Key Procedural History: The complaint alleges that Plaintiff’s founder met with Defendant’s CTO and other executives in 2007 under a non-disclosure agreement to present the patented technology for a potential license. Plaintiff alleges Defendant declined a license and subsequently launched its Xfinity services incorporating the technology, forming the basis for the willful infringement claims.
Case Timeline
| Date | Event |
|---|---|
| 2005-08-19 | Priority Date for all Asserted Patents |
| 2007-06-29 | Plaintiff alleges it provided Defendant with notice |
| 2007-08-23 | Plaintiff alleges further meetings with Defendant |
| 2008-10-28 | U.S. Patent No. 7,444,130 Issues |
| 2009-06-02 | U.S. Patent No. 7,542,753 Issues |
| 2010-01-01 | Approx. launch of Defendant's Xfinity Services |
| 2010-04-13 | U.S. Patent No. 7,697,669 Issues |
| 2011-03-15 | U.S. Patent No. 7,907,710 Issues |
| 2012-10-02 | U.S. Patent No. 8,280,009 Issues |
| 2013-07-23 | U.S. Patent No. 8,494,132 Issues |
| 2014-11-11 | U.S. Patent No. 8,885,802 Issues |
| 2017-04-04 | U.S. Patent No. 9,614,964 Issues |
| 2018-01-09 | U.S. Patent No. 9,866,697 Issues |
| 2019-06-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,885,802 - “Tethered Digital Butler Consumer Electronic Remote Control Device and Method”
- Patent Identification: U.S. Patent No. 8,885,802, issued November 11, 2014.
The Invention Explained
- Problem Addressed: The patent’s background section describes the market challenge of creating powerful, integrated consumer electronic systems, noting that "untethered" devices like early smartphones (e.g., Treo) were "over-built and too expensive" for many markets, while PC-based media centers were often complex and ill-suited for living room environments (’802 Patent, col. 1:45-67).
- The Patented Solution: The invention proposes a "tethered" system where a low-cost, handheld remote contains input/output components (e.g., microphone, keypad, display) while a wirelessly connected, more powerful stationary console (e.g., a set-top box) performs the demanding processing tasks (’802 Patent, Abstract; col. 2:47-56). This division of labor allows the remote to be simpler and cheaper while still enabling advanced, integrated features.
- Technical Importance: This client-server architecture for a remote control system offered a path to provide sophisticated, integrated control features (like voice commands) at a consumer-friendly price point by minimizing the processing hardware required in the handheld device itself (’802 Patent, col. 1:62-67).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶48).
- The essential elements of Claim 1, a system claim directed to a remote control device, include:
- A plurality of slaved audio inputs and outputs, including a microphone and a speaker
- A navigation control
- Hardware resources
- A wireless link transceiver
- A stack running on the hardware resources for exchanging packets with a set-top box or gateway
- An audio processor coupled to the hardware resources
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,542,753 - “Tethered Digital Butler Consumer Electronic Device and Method”
- Patent Identification: U.S. Patent No. 7,542,753, issued June 2, 2009.
The Invention Explained
- Problem Addressed: Like its family member, the ’802 Patent, this patent addresses the high cost and complexity of feature-rich, "untethered" handheld devices in the consumer market (’753 Patent, col. 1:45-62).
- The Patented Solution: The patent discloses a similar "tethered" system where a handheld remote offloads processing to a console. This patent specifically recites the use of touch screen navigation and a coprocessor for processing audio into a "remote control audio format," enabling wireless transmission of audio between devices (’753 Patent, Abstract; Claim 1).
- Technical Importance: The solution allowed for advanced user interfaces, such as touch screens, and audio processing capabilities on a low-cost remote by leveraging the processing power of a connected console, anticipating the functionality of modern smart remotes and app-based controls (’753 Patent, col. 2:47-56).
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶69).
- The essential elements of Claim 1, a system claim directed to a remote control device, include:
- A plurality of slaved audio inputs and outputs
- Touch screen navigation controls
- Hardware resources coupled with a wireless link transceiver
- A stack running on the hardware resources for exchanging packets with a master device
- A coprocessor coupled to the hardware resources to process audio into a remote control audio format
- The complaint does not explicitly reserve the right to assert dependent claims.
Additional Patents-in-Suit (Multi-Patent Capsules)
Patent Identification: U.S. Patent No. 7,444,130, titled “Tethered Digital Butler Consumer Electronic Device and Method,” issued October 28, 2008.
Technology Synopsis: This patent describes the foundational "tethered" system where a palm-held remote with features like a microphone, speaker, and keypad communicates wirelessly with a console. The console handles complex tasks like connecting to a telephone network, Internet browsing, and controlling media playback, thereby reducing the cost of the remote device.
Asserted Claims: At least Claim 10 (Compl. ¶186).
Accused Features: The complaint accuses smartphones (e.g., Galaxy S9) running Xfinity Apps, which allegedly feature the claimed audio inputs/outputs, touch screens, and wireless transceivers that work with VoIP-enabled gateways (Compl. ¶¶190, 194-198).
Patent Identification: U.S. Patent No. 7,697,669, titled “Tethered Digital Butler Consumer Electronic Remote Control Device and Method,” issued April 13, 2010.
Technology Synopsis: This patent in the family adds concepts related to Digital Rights Management (DRM) and transcoding. The invention describes a system where the remote control has a DRM port and the master device (console) transcodes audio input from the remote into a VoIP format.
Asserted Claims: At least Claim 27 (Compl. ¶92).
Accused Features: The complaint accuses smartphones (e.g., iPhone XR) of having DRM-compliant audio codecs and microphones, and accuses Xfinity set-top boxes and servers of transcoding audio input from the remote app into VoIP (Compl. ¶¶93, 104, 109).
Patent Identification: U.S. Patent No. 7,907,710, titled “Tethered Digital Butler Consumer Electronic Remote Control Device and Method,” issued March 15, 2011.
Technology Synopsis: This patent describes a system where a remote device with audio capabilities and a touchscreen exchanges and decodes packets with a VoIP-enabled set-top box. The invention includes encoder logic on the remote for processing audio input from a microphone.
Asserted Claims: At least Claim 7 (Compl. ¶118).
Accused Features: The complaint accuses smartphones (e.g., iPhone XR) running Xfinity Apps, which allegedly have encoder logic to process voice input and transceivers to exchange packets with Xfinity set-top boxes that transcode the input to VoIP (Compl. ¶¶122, 126, 131-132).
Patent Identification: U.S. Patent No. 8,280,009, titled “Consumer Electronic Registration, Control and Support Concierge Device and Method,” issued October 2, 2012.
Technology Synopsis: This patent shifts focus to using a remote device to initiate a customer support session for a "consumer concierge device." The invention describes a method where a single action on the remote triggers a support session, which can involve automated diagnostics or scheduling a call with a live representative.
Asserted Claims: At least Claim 1 (Compl. ¶141).
Accused Features: The complaint accuses smartphones running the Xfinity My Account app, which allows users to troubleshoot issues, contact support, and schedule service visits, allegedly with a single action (Compl. ¶¶150, 153, 155-156).
Patent Identification: U.S. Patent No. 8,494,132, titled “Tethered Digital Butler Consumer Electronic Remote Control Device and Method,” issued July 23, 2013.
Technology Synopsis: Similar to the '710 Patent, this patent describes a system with a remote control device having audio reproduction, a microphone, and a touch screen. The system exchanges and decodes packets with VoIP-enabled set-top boxes and gateways.
Asserted Claims: At least Claim 7 (Compl. ¶166).
Accused Features: The complaint accuses smartphones (e.g., Galaxy S9) running Xfinity Apps of operating as remote controls with the claimed features, including using a coprocessor to encode audio and exchanging packets with Xfinity gateways (Compl. ¶¶170, 174, 177).
Patent Identification: U.S. Patent No. 9,614,964, titled “Consumer Electronic Registration, Control and Support Concierge Device and Method,” issued April 4, 2017.
Technology Synopsis: This patent relates to onboarding and pairing control devices (e.g., a remote) with controlled devices (e.g., set-top box, camera). The invention involves a handheld "concierge device" executing instructions to pair devices and register them with a cloud-based system.
Asserted Claims: At least Claim 11 (Compl. ¶208).
Accused Features: The complaint alleges that installing and setting up Xfinity Apps on a smartphone causes the device to perform the claimed method of onboarding and pairing Xfinity remotes, set-top boxes, and home security devices with the Xfinity cloud/network (Compl. ¶¶213, 215-216, 219).
Patent Identification: U.S. Patent No. 9,866,697, titled “Consumer Electronic Registration, Control and Support Concierge Device and Method,” issued January 9, 2018.
Technology Synopsis: This patent is directed to methods of providing customer support and diagnostics. The invention involves executing instructions on a handheld "concierge device" and control gateways to provide diagnostic information about another device (e.g., a set-top box or camera).
Asserted Claims: At least Claim 11 (Compl. ¶243).
Accused Features: The complaint accuses smartphones running Xfinity Apps (e.g., My Account App) of providing customer support and diagnostics for Xfinity equipment by communicating with Xfinity gateways and the Defendant's cloud (Compl. ¶¶247, 251-252).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendant’s “Xfinity Services,” which collectively include Internet, video (TV), voice, and home security services, as well as the equipment, software, and apps used to provide and control them (Compl. ¶¶24, 45). Specific accused products include the Xfinity X1 set-top boxes, XR11 and XR15 voice remote controls, gateways/routers, and various Xfinity smartphone apps (e.g., My Account, Stream, TV Remote, Home) running on Android and Apple smartphones (Compl. ¶¶32, 55).
Functionality and Market Context
The accused Xfinity ecosystem allows a user to control a variety of services from multiple devices (Compl. ¶¶30, 35). A central feature is the voice-activated control provided by the XR11/XR15 remote controls and smartphone apps, which allow users to issue commands such as searching for content, changing channels, or controlling smart home devices (Compl. ¶¶30, 56). These commands are sent wirelessly from the remote device to a set-top box or gateway, which then communicates with Defendant's cloud-based infrastructure to process the request and execute the command (Compl. ¶¶58, 60). The complaint highlights Defendant's marketing of these integrated services as "The Next Level of Xfinity," where all services are "designed to work together" (Compl. ¶25, p. 7). The complaint references an image from Defendant's website showing a user interacting with multiple Xfinity services on a smartphone (Compl. p. 7).
IV. Analysis of Infringement Allegations
’802 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a remote control device comprising: a plurality of slaved audio inputs and outputs, including at least a microphone... | The XR11/XR15 remote controls and smartphones running Xfinity Apps include microphones for receiving audio input and speakers for audio output. | ¶56, ¶57 | col. 4:15-17 |
| a navigation control | The XR11/XR15 remotes and smartphones include navigation controls, such as a keypad. | ¶57 | col. 4:18-19 |
| hardware resources coupled between the wireless link transceiver and the slaved audio inputs and outputs... | The accused remotes and smartphones include hardware resources such as a processor and firmware coupled to the wireless transceiver, microphone, and keypad. | ¶57 | col. 4:20-25 |
| a wireless link transceiver; | The accused remotes and smartphones include Wi-Fi and/or Bluetooth transceivers for sending and receiving data. | ¶56, ¶58 | col. 4:20-22 |
| a stack running on the hardware resources and exchanging packets with a set-top box or gateway... | The accused remotes and smartphones are alleged to have a stack (e.g., Bluetooth) running on their hardware resources that exchanges packets with set-top boxes and gateways. A diagram illustrates this network (Compl. p. 22). | ¶52, ¶58 | col. 4:26-29 |
| an audio processor coupled to the hardware resources... | The accused products include audio processors, such as A/D converters and codecs, to encode audio/voice into packets. | ¶52, ¶59 | col. 4:31-33 |
- Identified Points of Contention:
- Scope Questions: The central claim term "slaved" will likely be a point of contention. A key question is whether a commercially standard voice remote that captures audio and transmits it as data packets is properly characterized as having "slaved audio inputs and outputs" as the term is used in the patent, which emphasizes a novel, low-cost architecture dependent on a console.
- Technical Questions: What evidence does the complaint provide that the accused devices' standard Bluetooth or Wi-Fi communication stacks perform the specific functions of the "stack running on the hardware resources" as required by the claim? The infringement read may depend on whether a generic communication protocol stack meets the limitation as understood in the context of the patent's disclosed "tethered" system.
’753 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a remote control device, comprising: a plurality of slaved audio inputs and outputs; | Smartphones sold by Defendant (e.g., Galaxy S9) include a microphone and speaker, which are alleged to be the slaved inputs and outputs. A diagram shows these components (Compl. p. 26). | ¶78 | col. 4:17-19 |
| touch screen navigation controls; | Smartphones running the Xfinity Apps use the device's touchscreen for on-screen navigation, including directional pads and buttons. | ¶73, ¶79 | col. 4:20-21 |
| hardware resources coupled between the wireless link transceiver and the slaved audio inputs and outputs and the navigation control; | The accused smartphones couple hardware resources (motherboard, processors) with the wireless transceiver, microphone, and touchscreen navigation control. | ¶80 | col. 4:22-26 |
| a wireless link transceiver; | The accused smartphones include Wi-Fi and Bluetooth wireless transceivers (e.g., Qualcomm SDR 845 RF Transceiver, Murata Bluetooth module). | ¶78, ¶80-81 | col. 4:22-23 |
| a stack running on the hardware resources and exchanging packets with a master device; | The accused smartphones have a stack (e.g., microcontroller chipset) that runs on the hardware and exchanges packets with set-top boxes and gateways using the Bluetooth chipset. | ¶73, ¶81 | col. 4:27-30 |
| a coprocessor coupled to the hardware resources and adapted to process the audio into a remote control audio format... | The accused smartphones include a coprocessor that converts/encodes audio and is capable of using assisted A2DP (Advanced Audio Distribution Profile) to process audio into the alleged remote control format. | ¶82 | col. 4:31-35 |
- Identified Points of Contention:
- Scope Questions: A primary question will be whether a general-purpose smartphone running a third-party application (the Xfinity App) can be construed as the claimed "remote control device." The defense may argue the patent contemplates a dedicated device, even if it resembles a smartphone.
- Technical Questions: Does the standard Bluetooth A2DP audio profile qualify as the claimed "remote control audio format"? The analysis will likely focus on whether A2DP is merely a standard for audio streaming or if its use in the accused system to transmit voice commands gives it the specific functional characteristics required by the claim.
V. Key Claim Terms for Construction
For the ’802 Patent:
- The Term: "slaved audio inputs and outputs"
- Context and Importance: This term appears foundational to the patent's "tethered" concept. Its construction will be critical for determining whether the accused remotes, which perform some local processing (e.g., audio capture), are sufficiently dependent on the set-top box/gateway to meet this limitation, or if they operate more autonomously than what the claim requires.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's summary describes the remote as having a "low cost and feature set supported by the console that is novel in the consumer electronics market" (’802 Patent, col. 2:10-13). This language may support an interpretation where any remote that offloads significant processing to a console to reduce its own cost and complexity has "slaved" components.
- Evidence for a Narrower Interpretation: The detailed description states that "Tethering the palm-held device, so that it depends on logic and resources of the console, runs against the trends" (’802 Patent, col. 2:51-53). This may support a narrower construction requiring a specific and deep functional dependency, not just the act of sending processed data packets over a wireless link.
For the ’753 Patent:
- The Term: "remote control device"
- Context and Importance: The complaint's infringement theory for this patent hinges on casting a general-purpose smartphone as the claimed "remote control device." Practitioners may focus on this term because the outcome could determine whether the patent reads on a vast market of app-enabled smartphones or is limited to dedicated remote control hardware.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract states that the "remote may resemble a... smart phone" (’753 Patent, Abstract). This statement could be cited to argue that the patent explicitly contemplated a device with the form and function of a smartphone.
- Evidence for a Narrower Interpretation: The patent repeatedly emphasizes a "low cost" remote that is part of a "tethered digital butler" system (’753 Patent, col. 2:4-13). This context may be used to argue that the term refers to a purpose-built, cost-optimized device, not a powerful, expensive, and independently functional computing platform like a modern smartphone.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by instructing and encouraging its customers to use the Xfinity products in an infringing manner (Compl. ¶¶66-67, 89-90). This is based on allegations that Defendant provides user guides, marketing materials, and installation instructions that direct users to combine and operate the system components (e.g., remote, set-top box, app) in a way that practices the patented methods (Compl. ¶¶25, 54).
- Willful Infringement: The complaint alleges willful infringement for all asserted patents, based on alleged pre-suit knowledge (Compl. ¶¶62-63, 85-86). The primary basis is a series of alleged meetings in 2007, under an NDA, where Plaintiff presented its patented technology to Defendant’s CTO and other executives (Compl. ¶¶20-23). The complaint alleges that Defendant was "long-aware" of the technology, "copied this technology," and "made no effort to avoid infringement" when it launched its Xfinity services around 2010 (Compl. ¶¶62, 85).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the patent claims, which describe a novel "tethered" system with "slaved" components designed to be low-cost, be construed broadly enough to read on Defendant's accused system, which is built on commercially successful, powerful, and multi-purpose devices like modern smartphones and standard voice remotes?
- A second key issue will be one of technical specificity: will the evidence show that generic, industry-standard technologies used in the accused products—such as Bluetooth A2DP for audio streaming or standard communication stacks—perform the specific functions of the claimed "remote control audio format" and "stack," or is there a fundamental mismatch between these general-purpose tools and the specific technical solutions disclosed in the patents?
- A central factual question for willfulness will be the nature and extent of Defendant's knowledge: what was communicated during the alleged 2007 meetings, and does the evidence support the allegation that Defendant copied the technology, or will it show that Defendant independently developed its Xfinity voice and control platform based on parallel industry trends?