Media Content Protection LLC v. HP Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Koninklijke Philips N.V. (The Netherlands) and Philips North America LLC (Delaware)
  • Defendant: HP Inc. (Delaware)
  • Plaintiff’s Counsel: Farnan LLP; Mintz Levin Cohn Ferris Glovsky & Popeo PC
• Case Identification: 1:20-cv-01241, D. Del., 09/17/2020
• Venue Allegations: Venue is based on Defendant being a Delaware corporation, thus residing in the District of Delaware.
• Core Dispute: Plaintiff alleges that Defendant’s digital video-capable products, such as laptops and monitors, infringe four patents related to secure authenticated distance measurement for controlling the transfer of protected digital content.
• Technical Context: The technology provides a method for verifying the physical proximity between two devices before allowing the transfer of protected content, a key feature in Digital Rights Management (DRM) systems such as High-bandwidth Digital Content Protection (HDCP).
• Key Procedural History: Plaintiff alleges it provided Defendant with notice of related patents via a letter dated March 21, 2014, and notice of the Asserted Patents in a letter dated September 16, 2020. U.S. Patent No. 9,436,809 was subject to two Inter Partes Review (IPR) proceedings, which resulted in a certificate confirming the patentability of asserted claims 1 and 49.

Case Timeline

Date	Event
2002-07-26	Earliest Priority Date for '809, '186, '977, '564 Patents
2014-03-21	Plaintiff sent first notice letter to Defendant regarding related patents
2016-09-06	U.S. Patent No. 9,436,809 Issued
2017-03-07	U.S. Patent No. 9,590,977 Issued
2018-10-02	U.S. Patent No. 10,091,186 Issued
2019-05-21	U.S. Patent No. 10,298,564 Issued
2020-09-16	Plaintiff sent second notice letter to Defendant alleging infringement of Asserted Patents
2020-09-17	Complaint Filed

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

U.S. Patent No. 9,436,809 - Secure Authenticated Distance Measurement

• Issued: September 6, 2016

The Invention Explained

• Problem Addressed: The patent addresses the problem of unauthorized distribution of digital content. While secure authenticated channels (SACs) can protect content during transfer, content owners seek to impose further restrictions, such as limiting transfers to devices within a specific physical proximity ('809 Patent, col. 2:23-28). The technical challenge is to perform a secure transfer of content only within a limited distance ('809 Patent, col. 2:38-41).
• The Patented Solution: The invention proposes a method where a first and second device establish and share a "common secret." To verify proximity, the first device sends a signal to the second. The second device modifies this signal using the shared secret and transmits it back. The first device measures the round-trip time to calculate the distance and verifies that the returned signal was correctly modified, thus confirming both the identity and proximity of the second device before allowing content transfer ('809 Patent, Abstract; col. 3:1-9).
• Technical Importance: This integration of authentication with distance measurement allows for the enforcement of proximity-based rules in DRM systems, a significant requirement for managing digital content rights in consumer electronics ('809 Patent, col. 1:40-44).

Key Claims at a Glance

• The complaint asserts independent claims 1, 17, and 49 (Compl. ¶29).
• Independent Claim 1 (First Device): A first device for controlling content delivery, comprising a processor arranged to:
  • receive a certificate from a second device;
  • determine if the second device is compliant based on the certificate;
  • provide a first signal to the compliant second device;
  • receive a second signal from the second device;
  • determine if the second signal is derived from a secret known by the first device;
  • determine if the round-trip time is less than a predetermined time; and
  • allow protected content to be provided if both conditions are met.
• Independent Claim 17 (System): A system for controlling content transmission from a content provider to a requesting device, comprising means for:
  • receiving a certificate from the requesting device;
  • validating the requesting device's compliance;
  • transmitting a first signal to the validated device;
  • receiving a second signal from the requesting device; and
  • providing protected content after determining the second signal depends on a secret and the round-trip time is less than a predetermined time.

U.S. Patent No. 10,091,186 - Secure Authenticated Distance Measurement

• Issued: October 2, 2018

The Invention Explained

• Problem Addressed: As with the '809 patent, the '186 patent addresses the need to control digital content distribution by not only authenticating a receiving device but also ensuring it is physically close to the source device to prevent unauthorized long-distance re-transmission ('186 Patent, col. 1:5-11, col. 2:23-28).
• The Patented Solution: The technology describes a first device that controls content delivery by first verifying a second device's compliance via a certificate. It then engages in a distance-bounding protocol where a first signal is sent, and a second, modified signal is received. The modification relies on a shared secret. Protected content is only provided if the second signal is verified as being derived from the secret and the round-trip time is below a certain threshold ('186 Patent, col. 7:5-22, col. 8:5-19).
• Technical Importance: The method provides a mechanism for content protection systems to trust that a connection is not only secure but also physically localized, which is a foundational concept for standards like HDCP that aim to prevent piracy.

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶39).
• Independent Claim 1 (First Device): A first device for controlling delivery of protected content, with a processor arranged to:
  • receive a certificate from a second device;
  • provide a first signal to the second device if its certificate indicates compliance;
  • receive a second signal from the second device; and
  • provide the protected content when the second signal is derived from a secret and the round-trip time is less than a predetermined time.

U.S. Patent No. 9,590,977 - Secure Authenticated Distance Measurement

• Issued: March 7, 2017
• Technology Synopsis: This patent relates to a receiving (second) device in a secure content-sharing system. The device provides a certificate for authentication, engages in a distance-bounding protocol using a shared secret to generate a return signal, and then receives protected content over a secure channel established using that same secret ('977 Patent, col. 7:5-24).
• Asserted Claims: Independent claims 1 and 11 (Compl. ¶49).
• Accused Features: The complaint alleges that HP devices, such as the HP ENVY 27 Monitor, which implement the HDCP 2.0 protocol, infringe by acting as the receiving device in the patented method (Compl. ¶50).

U.S. Patent No. 10,298,564 - Secure Authenticated Distance Measurement

• Issued: May 21, 2019
• Technology Synopsis: This patent claims a method and a (second) device for receiving protected content. The device provides a certificate to a first device, receives a signal, creates and provides a second signal derived from a shared secret, and then receives the protected content after the first device confirms its identity and proximity ('564 Patent, col. 7:4-26).
• Asserted Claims: Independent claim 1 (Compl. ¶59).
• Accused Features: The complaint alleges that HP devices, such as the HP ENVY 27 Monitor, which operate according to the HDCP 2.0 standard, infringe by performing the claimed steps of the receiving device (Compl. ¶60).

III. The Accused Instrumentality

Product Identification

The Accused Products are a wide range of HP's "digital video-capable devices," including but not limited to desktops, laptops, all-in-one PCs, tablets, monitors, and video hubs that support the HDCP 2.0 protocol and above (Compl. ¶20). The complaint specifically identifies the HP ProBook x360 11 G6 EE Notebook PC and the HP ENVY 27 27-inch Monitor as exemplary infringing products (Compl. ¶30, 50).

Functionality and Market Context

The complaint alleges these products are designed for delivering and displaying digital content to users (Compl. ¶16). Their relevant technical functionality is the implementation of the HDCP 2.0 (and higher) standard for securely transmitting video content over interfaces like HDMI (Compl. ¶23). The complaint alleges these products are made, used, sold, and imported throughout the United States (Compl. ¶4, 17). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references external claim chart exhibits (Exhibits E-H) that are not included with the filed complaint document (Compl. ¶30, 40, 50, 60). Therefore, a tabular analysis cannot be performed. The narrative infringement theory is summarized below.

The core of the infringement allegation is that any device compliant with the HDCP 2.0 (and above) standard necessarily practices the methods claimed in the Asserted Patents (Compl. ¶23). The HDCP 2.0 specification includes a multi-stage authentication and key exchange protocol to establish a secure connection and a shared secret between a source and a sink device. Crucially, it also includes a "locality check" mechanism. This check measures the round-trip time of a message exchange to ensure the receiving device is proximate (typically within 7ms) and not a repeater forwarding the content over a long distance. Philips's theory is that this combination of authentication (establishing a shared secret) followed by a time-bounded message exchange (the locality check) directly maps onto the elements of its patented "secure authenticated distance measurement" claims. The infringement is alleged to occur whenever an Accused Product establishes an HDCP 2.0 connection to transmit or receive protected content.

Identified Points of Contention

• Technical Questions: A primary technical question is whether the HDCP 2.0 locality check operates in the specific manner required by the claims. For example, the patents claim a return signal is "derived from a secret." The court will have to examine whether the signal used for the HDCP round-trip time measurement is itself cryptographically modified by the shared secret, or if the time measurement is a simple ping that occurs between two devices that have already been authenticated in a separate step.
• Scope Questions: Does the term "authenticated distance measurement," which forms the title and context of the patents, require an integrated process where authentication and distance-bounding are intrinsically linked in a single signal exchange? Or can it be interpreted to cover a two-stage process where a device is first authenticated and then, separately, its distance is measured? The answer will be critical to determining if the HDCP 2.0 protocol falls within the scope of the claims.

V. Key Claim Terms for Construction

• The Term: "the second signal is derived from a secret" (from '186 Patent, Claim 1; similar language in '809 Patent, Claim 1).
• Context and Importance: This term is central to the infringement analysis. The dispute will likely focus on whether the signal returned by the accused HP device during the HDCP locality check is "derived from" the shared session key in the manner claimed. Practitioners may focus on this term because the entire infringement theory rests on mapping the HDCP 2.0 protocol to this limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states generally that the second device "modifies the received signal according to the secret and retransmits the modified signal" ('809 Patent, col. 5:40-42). This language could be argued to encompass any protocol where the ability to respond correctly to the distance check signal is contingent on possessing the secret established during authentication.
  • Evidence for a Narrower Interpretation: The specification provides a specific embodiment where the modification involves "XORing the chips... of the direct sequence code by the bits of the secret" ('186 Patent, col. 5:57-61). This could support a narrower construction requiring that the secret be used to directly and cryptographically alter the content of the distance-measuring signal itself, not merely to enable a response.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement under 35 U.S.C. § 271(b) and (c) (Compl. ¶21). It alleges inducement is based on HP marketing and providing instructions and user guides that encourage customers to use the Accused Products in their intended, infringing manner (i.e., making HDCP connections) (Compl. ¶22, 33). The basis for contributory infringement is that the Accused Products are a material part of the invention, are especially adapted for an infringing use (HDCP 2.0 compliance), and have no substantial non-infringing use (Compl. ¶21, 34).
• Willful Infringement: Willfulness is alleged based on HP's purported actual notice of the Asserted Patents. The complaint pleads pre-suit knowledge based on a letter sent on March 21, 2014, concerning related predecessor patents, and a second letter sent on September 16, 2020, specifically identifying the Asserted Patents (Compl. ¶18, 19). The complaint alleges that infringement after receiving this notice has been willful.

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

The resolution of this case will likely depend on the court's interpretation of the patent claims in light of the technical operation of the HDCP 2.0 standard. The central questions are:

1. A key evidentiary question will be one of technical mapping: does the HDCP 2.0 protocol's "locality check" function as claimed in the patents? Specifically, is the time-measurement signal itself cryptographically dependent on the shared secret, or is the locality check a simple time-of-flight measurement that is functionally distinct from the authentication process that establishes the secret?
2. A core issue will be one of definitional scope: can the claim term "derived from a secret" be construed broadly to cover any distance-check protocol that is enabled by a prior authentication, or must it be limited to protocols where the secret is used to directly modify the substance of the distance-measuring signal, as described in the patents' specific embodiments?