DCT

1:23-cv-00986

DISH Tech LLC v. fuboTV Media Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:

  • Case Identification: 1:23-cv-00986, D. Del., 05/23/2024

  • Venue Allegations: Venue is alleged to be proper as Defendant is a Delaware corporation and has allegedly committed acts of infringement in the district, including offering its services to customers in Delaware.

  • Core Dispute: Plaintiff alleges that Defendant’s online streaming services infringe eight patents related to adaptive bitrate (ABR) streaming technology.

  • Technical Context: The technology concerns methods for delivering streaming video over the internet by breaking content into small segments available at multiple quality levels, allowing a user's device to dynamically select the best quality stream based on real-time network conditions.

  • Key Procedural History: The complaint describes a four-year history of pre-suit communications, beginning with a May 2019 letter from Plaintiff to Defendant identifying patents from the asserted portfolio and inviting licensing discussions. The parties allegedly engaged in subsequent correspondence, calls, and exchanged an NDA and exemplary claim charts before negotiations ceased, after which Plaintiff filed suit. Plaintiff also notes that its affiliate acquired the asserted patent portfolio from original inventor MOVE Networks for $45 million in 2010.

Case Timeline

Date Event
2004-04-30 Patent Priority Date for all asserted patents
2014-10-21 U.S. Patent No. 8,868,772 issues
2015-01-01 Plaintiff's Sling TV service launches
2016-08-02 U.S. Patent No. 9,407,564 issues
2019-05-29 Plaintiff sends initial letter to Defendant regarding ABR patent portfolio
2019-06-14 Defendant’s counsel responds to Plaintiff's letter
2019-07-01 Defendant’s counsel sends letter to arrange discussion
2019-11-05 U.S. Patent No. 10,469,554 issues
2019-11-05 U.S. Patent No. 10,469,555 issues
2020-08-25 U.S. Patent No. 10,757,156 issues
2020-09-02 Plaintiff notifies Defendant of newly granted ’554 and ’555 patents
2020-09-23 Defendant denies infringement allegations in a letter
2020-10-20 Parties countersign a Non-Disclosure Agreement
2020-12-16 Parties hold phone call to discuss potential licensing agreement
2021-03-16 U.S. Patent No. 10,951,680 issues
2021-08-11 Defendant’s outside counsel informs Plaintiff it no longer represents Defendant in licensing talks
2022-10-11 U.S. Patent No. 11,470,138 issues
2023-04-24 Plaintiff sends email to Defendant’s new in-house counsel to restart licensing discussions
2023-06-13 U.S. Patent No. 11,677,798 issues
2023-07-10 Plaintiff sends exemplary claim charts to Defendant
2023-09-05 Defendant’s Chief Legal Officer states Defendant does not need a license
2024-05-23 First Amended Complaint filed

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

U.S. Patent No. 10,469,554 - Apparatus, system, and method for multi-bitrate content streaming (Issued Nov. 5, 2019)

The Invention Explained

  • Problem Addressed: The patent's background section describes the state of internet video delivery as a choice between slow, complete downloads and lower-quality, unreliable streaming that is vulnerable to network congestion and failures (’554 Patent, col. 2:1-10). It notes that streaming sacrifices quality and functionality like fast-forward and rewind compared to downloading (’554 Patent, col. 1:52-57, col. 2:1-4).
  • The Patented Solution: The invention proposes a client-centric, HTTP-based system for adaptive bitrate streaming. A media file is segmented into small, independently requestable files called "streamlets," which are encoded into multiple streams at different bitrates (e.g., low, medium, high quality) (’554 Patent, col. 7:10-21, Fig. 3b). A client device, or "end user station," monitors network performance and intelligently requests the appropriate quality streamlet for the next segment of video, allowing it to "upshift" or "downshift" quality dynamically to maintain continuous playback (’554 Patent, col. 9:26-34, col. 17:46-54).
  • Technical Importance: This client-pull approach, using standard web protocols, aimed to improve reliability and reduce costs compared to server-push systems that required specialized, expensive servers and protocols (Compl. ¶¶ 23, 26-27).

Key Claims at a Glance

  • The complaint asserts independent claim 16. (Compl. ¶50).
  • Essential elements of claim 16 include:
    • An end user station to stream a live event video from a server.
    • The live video is encoded at different bitrates into a plurality of streams (low, medium, high quality), each comprising a group of "streamlets."
    • First streamlets of each quality stream have equal playback duration and encode the same portion of the live video.
    • The end user station selects a specific stream based on its own determination to select a higher or lower bitrate.
    • The end user station places a request for the first streamlet of the selected stream.
    • The end user station receives the requested streamlet and provides it for playback.
  • The complaint reserves the right to assert other claims, including dependent claims 1-8, 10-13, 17-20, and 22-30. (Compl. ¶50).

U.S. Patent No. 11,677,798 - Apparatus, system, and method for multi-bitrate content streaming (Issued Jun. 13, 2023)

The Invention Explained

  • Problem Addressed: The complaint alleges this patent family addresses the unreliability, inefficiency, and latency of early internet streaming systems, which sacrificed quality for immediacy and lacked robust features like direct seek. (Compl. ¶¶ 21-22).
  • The Patented Solution: Like the ’554 Patent, this invention involves segmenting digital content into "streamlets" encoded at different bit rates. An "intelligent client" at the end-user station is responsible for measuring network performance and determining which quality level of the next streamlet to "pull" from a standard web server using HTTP/TCP protocols. (Compl. ¶¶ 23, 26).
  • Technical Importance: This client-centric approach was designed to improve the user experience by reducing buffering and enabling a more consistent, higher-quality stream that could adapt to changing network conditions without specialized server infrastructure. (Compl. ¶¶ 25-26).

Key Claims at a Glance

  • The complaint asserts independent claim 8. (Compl. ¶75).
  • Essential elements of claim 8 include:
    • An end user station with a processor and memory.
    • Instructions cause the processor to establish network connections to a server configured to access groups of "streamlets."
    • The digital content is encoded at different bitrates into at least three streams, each comprising groups of streamlets.
    • First streamlets of each stream have equal playback duration and encode the same portion of the digital content.
    • The processor determines whether to select a higher or lower bit rate copy of the stream and, based on that, selects a specific one of the streams.
    • The processor places a request for the first streamlet of the selected stream, receives it, and provides it for output.
  • The complaint reserves the right to assert other claims, including dependent claims 1-7, 9-19, and 21-25. (Compl. ¶75).

U.S. Patent No. 9,407,564 - "Apparatus, system, and method for adaptive-rate shifting of streaming content"

  • Patent Identification: U.S. Patent No. 9407564, "Apparatus, system, and method for adaptive-rate shifting of streaming content," issued August 2, 2016. (Compl. ¶10).
  • Technology Synopsis: This patent relates to ABR technology where a client-side media player makes successive determinations to shift playback quality. The player repeatedly generates a performance "factor" and uses it to decide whether to "upshift" or "downshift" to a different quality version of the content to maintain continuous playback. (Compl. ¶¶ 19, 26, 100).
  • Asserted Claims: Independent claim 8. (Compl. ¶100).
  • Accused Features: The Accused Streaming Services are alleged to infringe by adapting requests for segments based on network quality. (Compl. ¶100).

U.S. Patent No. 10,951,680 - "Apparatus, system, and method for multi-bitrate content streaming"

  • Patent Identification: U.S. Patent No. 10951680, "Apparatus, system, and method for multi-bitrate content streaming," issued March 16, 2021. (Compl. ¶8).
  • Technology Synopsis: This patent relates to ABR technology where an end user station streams video by selecting from among low, medium, and high quality streams composed of "streamlets." The selection is based on a determination made by the end user station to use a higher or lower bitrate version of the stream. (Compl. ¶¶ 19, 125).
  • Asserted Claims: Independent claim 14. (Compl. ¶125).
  • Accused Features: The Accused Streaming Services are alleged to infringe by adapting requests for segments of varying quality based on network conditions. (Compl. ¶125).

U.S. Patent No. 10,469,555 - "Apparatus, system, and method for multi-bitrate content streaming"

  • Patent Identification: U.S. Patent No. 10469555, "Apparatus, system, and method for multi-bitrate content streaming," issued November 5, 2019. (Compl. ¶12).
  • Technology Synopsis: This patent relates to a content player device that streams video by selecting from streams of varying quality. The selection is based on a determination made by the client module to select a higher or lower bitrate version of the streams. (Compl. ¶¶ 19, 150).
  • Asserted Claims: Independent claim 10. (Compl. ¶150).
  • Accused Features: The Accused Streaming Services are alleged to infringe by adapting requests for segments based on network quality. (Compl. ¶150).

U.S. Patent No. 8,868,772 - "Apparatus, system, and method for multi-bitrate content streaming"

  • Patent Identification: U.S. Patent No. 8868772, "Apparatus, system, and method for multi-bitrate content streaming," issued October 21, 2014. (Compl. ¶13).
  • Technology Synopsis: This patent describes a method for presenting rate-adaptive streams where a media player automatically requests subsequent portions of a video from different quality copies. The decision is based on successive determinations that use a set of performance-related factors to shift playback quality and achieve continuous playback. (Compl. ¶¶ 19, 175).
  • Asserted Claims: Independent claim 1. (Compl. ¶175).
  • Accused Features: The Accused Streaming Services are alleged to infringe by adapting requests for segments of varying quality based on network conditions. (Compl. ¶175).

U.S. Patent No. 11,470,138 - "Apparatus, system, and method for multi-bitrate content streaming"

  • Patent Identification: U.S. Patent No. 11470138, "Apparatus, system, and method for multi-bitrate content streaming," issued October 11, 2022. (Compl. ¶14).
  • Technology Synopsis: This patent relates to an end user station that streams video over an internet connection. The station selects a specific stream from a plurality of quality options based on its own determination to select a higher or lower bitrate version, then places a request for a "streamlet" from that stream. (Compl. ¶¶ 19, 200).
  • Asserted Claims: Independent claim 14. (Compl. ¶200).
  • Accused Features: The Accused Streaming Services are alleged to infringe by adapting requests for segments based on network quality. (Compl. ¶200).

U.S. Patent No. 10,757,156 - "Apparatus, system, and method for adaptive-rate shifting of streaming content"

  • Patent Identification: U.S. Patent No. 10757156, "Apparatus, system, and method for adaptive-rate shifting of streaming content," issued August 25, 2020. (Compl. ¶15).
  • Technology Synopsis: This patent describes an apparatus with a media player configured to adaptively receive a digital stream. The player requests sequential "streamlets" via HTTP GET requests and adapts successive determinations to shift playback quality based on a repeatedly generated network performance factor. (Compl. ¶¶ 19, 225).
  • Asserted Claims: Independent claim 1. (Compl. ¶225).
  • Accused Features: The Accused Streaming Services are alleged to infringe by receiving segments of a program and adapting requests based on network quality. (Compl. ¶225).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies the accused instrumentalities as the online streaming services operated by Defendant through its "fuboTV Application and the fuboTV Server(s)," collectively referred to as the "Accused Streaming Services." (Compl. ¶34).
  • Functionality and Market Context: The complaint alleges that the Accused Streaming Services operate by receiving segments of a selected video program for playback over a network connection. (Compl. ¶¶ 50, 75). A core accused functionality is the adaptation of requests for these segments, selecting from a set of segments that have the same content but varying quality, with the selection being based on the quality of the user's network connection. (Compl. ¶¶ 50, 75, 100). Plaintiff alleges that Defendant’s use of this technology has established it as a leading provider of live TV streaming services. (Compl. ¶¶ 35-36).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

  • 10469554 Patent Infringement Allegations
Claim Element (from Independent Claim 16) Alleged Infringing Functionality Complaint Citation Patent Citation
An end user station to stream a live event video over a network from a server for playback of the video... The Accused Streaming Services are used on end-user devices to stream video over a network. ¶50 col. 20:4-7
wherein the live event video is encoded at a plurality of different bitrates to create a plurality of streams including at least a low quality stream, a medium quality stream, and a high quality stream... The Accused Streaming Services adapt requests for segments from a set of segments with the same content but varying quality. ¶50 col. 20:13-18
wherein the first streamlets of each of the low quality stream, the medium quality stream and the high quality stream each has an equal playback duration and each of the first streamlets encodes the same portion of the live event video at a different one of the different bitrates; The Accused Streaming Services allegedly use segments with the same content (i.e., same portion of video) but varying quality (i.e., different bitrates). ¶50 col. 20:25-30
select a specific one of the low quality stream, the medium quality stream, and the high quality stream based upon a determination by the end user station to select a higher or lower bitrate version of the streams; The Accused Streaming Services adapt their requests for segments based upon the quality of the network connection, a determination allegedly made by the end user device. ¶50 col. 20:31-35
place a streamlet request to the server over the one or more network connections for the first streamlet of the selected stream; The end-user device running the fuboTV application places requests for the selected video segments. ¶50 col. 20:36-38
receive the requested first streamlet from the server...and provide the received first streamlet for playback of the live event video. The end-user device receives the segments and provides them for playback. ¶50 col. 20:39-42
  • 11677798 Patent Infringement Allegations
Claim Element (from Independent Claim 8) Alleged Infringing Functionality Complaint Citation Patent Citation
An end user station comprising: a processor; a digital processing apparatus memory device comprising non-transitory machine-readable instructions that, when executed, cause the processor to: The fuboTV application operates on an end user device with a processor and memory. ¶75 col. 18:24-29
establish one or more network connections between the end user station and at least one server, wherein the at least one server is configured to access at least one of a plurality of groups of streamlets of digital content; The Accused Streaming Services establish network connections to receive segments (streamlets) of a selected program. ¶75 col. 18:30-33
wherein the digital content is encoded at a plurality of different bit rates to create a plurality of streams including at least a first bit rate stream, a second bit rate stream, and a third bit rate stream... The Accused Streaming Services adapt requests for segments from a set with the same content but varying quality. ¶75 col. 18:34-42
determine whether to select a higher or lower bit rate copy of the stream and based on that determination, select a specific one of the first bit rate stream, the second bit rate stream, and the third bit rate stream; The Accused Streaming Services adapt requests for segments based on the quality of the network connection, which allegedly constitutes the claimed determination and selection. ¶75 col. 18:51-55
place a first streamlet request to the at least one server...receive the requested first streamlet...and provide the received first streamlet for output of the digital content to a presentation device. The end-user device requests and receives the selected segment and provides it for playback. ¶75 col. 18:56-64
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the term "streamlet," as defined and used in the patents, can be construed to read on the video segments employed by Defendant’s modern ABR streaming architecture. The patents describe "streamlets" as "independent media object[s]" that are "encapsulated" (’554 Patent, col. 7:42-43), and the alignment between this specific patented structure and Defendant's actual implementation will be a focus.
    • Technical Questions: The asserted claims require the "end user station" to make the "determination" to select a higher or lower bitrate stream. A key factual question will be what evidence demonstrates that Defendant's fuboTV application performs this specific decision-making logic on the client device, as opposed to decisions being influenced or controlled by Defendant's servers.

V. Key Claim Terms for Construction

  • For the ’554 and ’798 Patents:

    • The Term: "streamlet"

    • Context and Importance: This term is foundational to the patented invention. How broadly or narrowly it is construed will directly impact whether the video segments used in fuboTV’s modern streaming service meet this limitation. Practitioners may focus on this term because its definition appears to be a neologism tied to the patent's specific disclosure.

    • Intrinsic Evidence for Interpretation:

      • Evidence for a Broader Interpretation: The specification provides a broad definition: "streamlet refers to any sized portion of the content file 200." (’554 Patent, col. 7:39-40). This could support an argument that it covers any form of video segmentation.
      • Evidence for a Narrower Interpretation: The specification also describes streamlets in more detail as portions of content "encapsulated as an independent media object" with a "unique time index" (’554 Patent, col. 7:41-45). This, along with specific embodiments describing streamlets of two-second durations, may support a narrower construction tied to these specific characteristics.

    • The Term: "based upon a determination by the end user station" (’554 Patent, Claim 16) / "determine whether to select a higher or lower bit rate copy of the stream" (’798 Patent, Claim 8)

    • Context and Importance: This limitation defines the client-centric nature of the invention. The dispute will likely center on where and how the decision to switch bitrates is made in the accused system.

    • Intrinsic Evidence for Interpretation:

      • Evidence for a Broader Interpretation: The specification describes the client module as being "configured to select a quality level" based on "continuous observation of time intervals between successive receive times of each requested streamlet" (’554 Patent, col. 13:21-26). This could be argued to cover any client-side logic that uses network performance metrics.
      • Evidence for a Narrower Interpretation: The specification provides a specific algorithm for making this determination, involving calculating a "performance factor" and comparing it to "trigger thresholds" that are themselves based on a "read ahead margin" and a "minimum safety margin" (’554 Patent, col. 17:46-60). This detailed disclosure might be used to argue for a narrower construction limited to this or a similar specific process.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement by fuboTV’s customers (end-users). The alleged inducing acts include training customers on how to use the Accused Streaming Services, as well as the promotion and sale of the services for their infringing use. (Compl. ¶¶ 57, 59, 82, 84). Plaintiff cites Defendant’s online help articles as an example of such training and encouragement. (Compl. ¶¶ 59, 84).
  • Willful Infringement: The complaint alleges willful infringement based on Defendant’s alleged pre-suit knowledge of the asserted patent portfolio. The basis for this allegation is a detailed timeline of communications starting with a May 29, 2019 letter from Plaintiff that identified patents in the portfolio. The allegations include subsequent communications, the provision of exemplary claim charts showing how the patents allegedly read on fuboTV's services, and Defendant's ultimate decision to continue its activities without a license. (Compl. ¶¶ 37-48).

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

  • A core issue will be one of technical and definitional scope: Can the term "streamlet," as described in patents with a 2004 priority date, be construed to cover the specific format and structure of video segments used in Defendant's modern ABR streaming system, or did the technology evolve in a way that creates a non-infringing distinction?
  • A key evidentiary question will be one of locus of control: What evidence will show whether the critical decision to "upshift" or "downshift" bitrate, as required by the claims, is a "determination by the end user station" in the accused system, or if it is a process guided, controlled, or dictated by Defendant’s servers in a manner that falls outside the claim scope?
  • The outcome of the willfulness allegation may turn on the reasonableness of Defendant's position: Given the extensive pre-suit notice and licensing discussions alleged in the complaint, a central question will be whether Defendant’s continued alleged infringement after receiving notice and claim charts was objectively reckless or based on a reasonable, good-faith belief of non-infringement or invalidity.