1:23-cv-01305
DISH Tech LLC v. Yanka Industries Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: DISH Technologies L.L.C. and Sling TV L.L.C. (Colorado)
- Defendant: Yanka Industries, Inc. d/b/a MasterClass (Delaware)
- Plaintiff’s Counsel: Ashby & Geddes LLP; Baker Botts L.L.P.
- Case Identification: 1:23-cv-01305, D. Del., 11/21/2024
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is incorporated in Delaware and has allegedly committed acts of infringement in the state.
- Core Dispute: Plaintiff alleges that Defendant’s online streaming services infringe a portfolio of nine patents related to adaptive bitrate streaming (ABR) technology.
- Technical Context: The patents address methods for improving the quality and reliability of streaming video over the internet by dynamically adjusting the bitrate of the content based on network conditions, a foundational technology for modern on-demand and live streaming services.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendant a notice letter on March 17, 2023, identifying the patent portfolio, offering a license, and providing documents from a prior Plaintiff ITC case against Peloton. Plaintiff alleges that Defendant did not respond to this letter or subsequent follow-up communications.
Case Timeline
| Date | Event |
|---|---|
| 2004-04-30 | Earliest Priority Date for all Asserted Patents |
| 2014-10-21 | U.S. Patent No. 8,868,772 Issues |
| 2016-08-02 | U.S. Patent No. 9,407,564 Issues |
| 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 |
| 2021-03-16 | U.S. Patent No. 10,951,680 Issues |
| 2022-10-11 | U.S. Patent No. 11,470,138 Issues |
| 2023-03-17 | Plaintiff sends initial notice letter to Defendant |
| 2023-06-13 | U.S. Patent No. 11,677,798 Issues |
| 2023-07-11 | Plaintiff sends follow-up communication to Defendant |
| 2023-07-31 | Plaintiff sends second follow-up communication to Defendant |
| 2024-05-21 | U.S. Patent No. 11,991,234 Issues |
| 2024-11-21 | 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"
The Invention Explained
- Problem Addressed: The patent’s background section describes the state of early internet video, where users faced a choice between slow, complete downloads of high-quality files and unreliable, low-quality streaming that was prone to buffering and network congestion (Compl. ¶¶ 19-21; ’554 Patent, col. 1:40-67, col. 2:1-10). Existing streaming protocols often used a server-side "push" approach that could not adapt well to fluctuating network conditions at the user's end (Compl. ¶22).
- The Patented Solution: The invention proposes a client-centric "pull" system for adaptive bitrate streaming. A media file is pre-encoded into multiple streams, each at a different bitrate (e.g., low, medium, high). Each stream is then segmented into smaller files called "streamlets" of a fixed duration (Compl. ¶22; ’554 Patent, col. 7:1-5, FIG. 3b). The client device (end user station) monitors its own network performance and intelligently requests, or "pulls," the next streamlet from the stream whose bitrate is best suited for the current conditions, allowing for seamless switching between quality levels to avoid buffering (Compl. ¶25; ’554 Patent, col. 13:5-24).
- Technical Importance: This client-side, pull-based ABR approach allows streaming services to deliver the highest possible video quality that a user's connection can sustain at any given moment, significantly improving the user experience over prior server-pushed, fixed-bitrate methods (Compl. ¶¶ 22, 25).
Key Claims at a Glance
- The complaint asserts independent claim 16 (Compl. ¶38).
- Essential elements of independent claim 16 include:
- An end user station with a processor and memory.
- Instructions causing the processor to establish network connections with a server configured to access groups of "streamlets."
- The video is encoded into at least low, medium, and high quality streams, each comprising a group of streamlets.
- At least one stream is encoded at a bit rate of no less than 600 kbps.
- The first streamlets of each quality level have an equal playback duration and encode the same portion of the video.
- The end user station selects a specific stream (e.g., low, medium, or high) based on its own determination.
- 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 also asserts dependent claims 1-5, 7-8, 10-13, 17-20, and 22-30 (Compl. ¶38).
U.S. Patent No. 11,677,798 - "Apparatus, system, and method for multi-bitrate content streaming"
The Invention Explained
- Problem Addressed: The technology addresses the same fundamental problem as the ’554 Patent: the unreliability and poor quality of early internet video streaming, which sacrificed quality for immediacy and was vulnerable to network congestion (’798 Patent, col. 2:1-10).
- The Patented Solution: The ’798 Patent also describes a client-side ABR system. The solution involves encoding digital content into multiple streams at different bit rates (e.g., first, second, third bit rate streams), where each stream consists of time-aligned "streamlets" of equal duration that represent the same portion of the content (’798 Patent, col. 7:5-14, FIG. 3b). The end-user device determines whether to select a higher or lower bit rate copy of the stream and then requests the appropriate streamlet from the server, receives it, and provides it for output, thereby adapting playback quality to network conditions (’798 Patent, col. 13:5-24).
- Technical Importance: This technology, part of the broader ABR portfolio, enabled a more resilient and higher-quality streaming experience by shifting the intelligence for bitrate selection from the server to the client device, which has the most accurate view of real-time network performance (Compl. ¶¶ 22, 25).
Key Claims at a Glance
- The complaint asserts independent claim 11 (Compl. ¶63).
- Essential elements of independent claim 11 include:
- An end user station with a processor and memory.
- Instructions causing the processor to establish network connections with at least one server configured to access groups of streamlets.
- The digital content is encoded into at least three streams at different bit rates.
- At least one stream is encoded at a bit rate of no less than 600 kbps.
- The first streamlets of each stream have equal playback duration and encode the same portion of the content.
- The end user station determines whether to select a higher or lower bit rate copy and selects a specific stream based on that determination.
- 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 output to a presentation device.
- The complaint also asserts dependent claims 1-10, 12-19, and 21-25 (Compl. ¶63).
Multi-Patent Capsules
Patent Identification: U.S. Patent No. 9,407,564, "Apparatus, system, and method for adaptive-rate shifting of streaming content," issued August 2, 2016.
Technology Synopsis: This patent describes a method for presenting rate-adaptive streams where an end-user media player repeatedly generates a "factor" indicative of its ability to sustain the stream (e.g., based on network performance). The player uses this factor to make successive determinations to shift playback quality up or down based on whether the factor is above a first threshold or below a second threshold (Compl. ¶88).
Asserted Claims: Independent claim 8 is asserted (Compl. ¶88).
Accused Features: The accused features are the MasterClass streaming services' functionality for adapting requests for video segments of varying quality based on network conditions (Compl. ¶88).
Patent Identification: U.S. Patent No. 10,951,680, "Apparatus, system, and method for multi-bitrate content streaming," issued March 16, 2021.
Technology Synopsis: This patent claims an end-user station for ABR streaming that is similar to others in the portfolio. A distinguishing feature is the recitation of placing a "virtual timeline request" for "virtual times" based on the selected stream, which provides a playlist or schedule for the user to view (Compl. ¶113).
Asserted Claims: Independent claim 14 is asserted (Compl. ¶113).
Accused Features: The accused features are the MasterClass streaming services' system for receiving and adapting requests for segments of a selected video program based on network connection quality (Compl. ¶113).
Patent Identification: U.S. Patent No. 10,469,555, "Apparatus, system, and method for multi-bitrate content streaming," issued November 5, 2019.
Technology Synopsis: This patent claims a "content player device" that performs ABR by encoding video into multiple streams (low, medium, high), with at least one stream at 600 kbps or higher. It specifies that a streamlet encoding a portion of the video in a low quality stream has an equal playback duration as the streamlet encoding the same portion in a high quality stream (Compl. ¶138).
Asserted Claims: Independent claim 10 is asserted (Compl. ¶138).
Accused Features: The accused features are the MasterClass streaming services' functionality for adapting requests for video segments of varying quality based on network conditions (Compl. ¶138).
Patent Identification: U.S. Patent No. 8,868,772, "Apparatus, system, and method for multi-bitrate content streaming," issued October 21, 2014.
Technology Synopsis: This patent describes a method for presenting rate-adaptive streams where a media player repeatedly generates a set of "one or more factors" related to network performance. Based on these factors, it makes successive determinations to shift playback quality to achieve continuous playback using the highest sustainable quality (Compl. ¶163).
Asserted Claims: Independent claim 1 is asserted (Compl. ¶163).
Accused Features: The accused features are the MasterClass streaming services' system for adapting requests for video segments based on network connection quality (Compl. ¶163).
Patent Identification: U.S. Patent No. 11,470,138, "Apparatus, system, and method for multi-bitrate content streaming," issued October 11, 2022.
Technology Synopsis: This patent claims an "end user station" that performs ABR by establishing an internet connection and selecting among low, medium, and high quality streams based on a client-side determination. The claims require at least one stream to be encoded at no less than 600 kbps and that the corresponding first streamlets of each quality level have equal playback duration (Compl. ¶188).
Asserted Claims: Independent claim 14 is asserted (Compl. ¶188).
Accused Features: The accused features are the MasterClass streaming services' system for adapting requests for video segments based on network quality (Compl. ¶188).
Patent Identification: U.S. Patent No. 10,757,156, "Apparatus, system, and method for adaptive-rate shifting of streaming content," issued August 25, 2020.
Technology Synopsis: This patent claims an apparatus with a media player that requests sequential "streamlets" using hypertext transport protocol (HTTP) GET requests. The media player repeatedly generates a "factor" related to network performance and uses it to adapt its determinations to shift playback quality to achieve continuous playback at the highest sustainable quality (Compl. ¶213).
Asserted Claims: Independent claim 1 is asserted (Compl. ¶213).
Accused Features: The accused features are the MasterClass streaming services' system for adapting requests for segments of a selected video program based on network quality (Compl. ¶213).
Patent Identification: U.S. Patent No. 11,991,234, "Apparatus, system, and method for multi-bitrate content streaming," issued May 21, 2024.
Technology Synopsis: This patent describes a method executable by a client device for outputting rate-adaptive streams. The method includes receiving "individually-requestable portions" of content and repeatedly generating a factor indicative of the ability to receive the content at a sufficient rate, using that factor to decide whether to shift the requested bit rate up or down based on thresholds (Compl. ¶238).
Asserted Claims: Independent claim 12 is asserted (Compl. ¶238).
Accused Features: The accused features are the MasterClass streaming services' system for adapting requests for segments of a selected video program based on network quality (Compl. ¶238).
III. The Accused Instrumentality
Product Identification
- The "Accused Streaming Services," defined as the online streaming services operated by MasterClass through its Application, Site, and Server(s) (Compl. ¶33).
Functionality and Market Context
- The complaint alleges that the Accused Streaming Services are used to distribute on-demand content over the internet (Compl. ¶33). The core accused functionality is the system's method of receiving segments of a selected video program and adapting requests for those segments from a set of segments that have the same content but varying quality, with the adaptation based on the quality of the user's network connection (Compl. ¶¶ 38, 63). The complaint positions MasterClass as a "distributor of on-demand content via the Internet" in a market for adaptive streaming technology with a few major players (Compl. ¶¶ 33, 49).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
10,469,554 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... comprising: a processor; a digital processing apparatus memory device comprising non-transitory machine-readable instructions... | The Accused Streaming Services are used on end-user devices (e.g., mobile devices, computers, smart TVs) containing processors and memory that execute the MasterClass application. | ¶¶33, 38 | col. 6:45-51 |
| establish one or more network connections between the end user station and the server, wherein the server is configured to access at least one of a plurality of groups of streamlets; | The MasterClass application establishes network connections with MasterClass servers to receive segments of a selected video program. | ¶38 | col. 6:11-16 |
| 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... each group comprising at least first and second streamlets... | The MasterClass services adapt requests for segments from a set of segments with the same content but varying quality, which corresponds to video encoded at different bitrates into different quality streams. | ¶38 | col. 8:3-13 |
| wherein at least one of the low quality stream, the medium quality stream, and the high quality stream is encoded at a bit rate of no less than 600 kbps; | The complaint does not provide specific detail for analysis of the bitrates used by the Accused Streaming Services. | ¶38 | col. 15:42-45 |
| wherein the first streamlets of each of the... streams each has an equal playback duration and each... encodes the same portion of the live event video... | The Accused Streaming Services are alleged to use segments with the same content but varying quality, implying time-aligned segments of equal duration. | ¶38 | col. 8:3-13 |
| select a specific one of the... streams based upon a determination by the end user station to select a higher or lower bitrate version... | The Accused Streaming Services adapt requests for segments of varying quality based upon the quality of the network connection, which is a determination made at the end user station. | ¶38 | col. 13:5-24 |
| place a streamlet request to the server... for the first streamlet of the selected stream; | The MasterClass application places requests to MasterClass servers for the next video segment based on its quality determination. | ¶38 | col. 13:39-44 |
| receive the requested first streamlet from the server... and provide the received first streamlet for playback... | The MasterClass application receives the requested video segment from the server and provides it to the user for playback. | ¶38 | col. 14:14-20 |
11,677,798 Infringement Allegations
| Claim Element (from Independent Claim 11) | 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... | The Accused Streaming Services are used on end-user devices (e.g., mobile devices, computers, smart TVs) containing processors and memory that execute the MasterClass application. | ¶¶33, 63 | col. 6:45-51 |
| 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... groups of streamlets... | The MasterClass application establishes network connections with MasterClass servers to receive segments of a selected video program. | ¶63 | col. 6:11-16 |
| 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 MasterClass services adapt requests for segments from a set of segments with the same content but varying quality, which corresponds to content encoded at different bitrates into different quality streams. | ¶63 | col. 8:3-13 |
| wherein at least one of the first bit rate stream, the second bit rate stream, and the third bit rate stream is encoded at a bit rate of no less than 600 kbps; | The complaint does not provide specific detail for analysis of the bitrates used by the Accused Streaming Services. | ¶63 | col. 15:42-45 |
| wherein the first streamlets of each... stream each has an equal playback duration and each... encodes the same portion of the digital content... | The Accused Streaming Services are alleged to use segments with the same content but varying quality, implying time-aligned segments of equal duration. | ¶63 | col. 8:3-13 |
| 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... streams; | The Accused Streaming Services adapt their requests for segments based upon the quality of the network connection, which is a determination made at the end user station. | ¶63 | col. 13:5-24 |
| place a first streamlet request to the at least one server... for the first streamlet of the selected stream; | The MasterClass application places requests to MasterClass servers for the next video segment based on its quality determination. | ¶63 | col. 13:39-44 |
| receive the requested first streamlet... and provide the received first streamlet for output... to a presentation device. | The MasterClass application receives the requested video segment from the server and provides it to the user's presentation device for playback. | ¶63 | col. 14:14-20 |
- Identified Points of Contention:
- Scope Questions: A potential issue may arise regarding the scope of "live event video" as recited in claim 16 of the ’554 Patent. The complaint accuses MasterClass's on-demand streaming services (Compl. ¶33), which raises the question of whether the claims, which explicitly recite a "live event," can be construed to read on pre-recorded, on-demand content.
- Technical Questions: The complaint's infringement allegations are stated at a high level, asserting that the Accused Streaming Services "adapt requests for segments... based upon the quality of the network connection" (Compl. ¶¶ 38, 63). A central technical question will be what evidence demonstrates that this adaptation performs the specific steps claimed, such as the client-side "determination" to select a stream, as opposed to other methods of bitrate adaptation. The complaint does not detail the specific algorithm or factors the accused system allegedly uses.
- Evidentiary Questions: The claims in both the ’554 and ’798 Patents require at least one stream encoded at a bitrate of "no less than 600 kbps." The complaint provides no specific facts or evidence regarding the bitrates employed by MasterClass, creating an evidentiary question for discovery.
V. Key Claim Terms for Construction
The Term: "streamlet"
Context and Importance: This term appears in the asserted claims of all nine patents and is fundamental to the patented invention's architecture of segmenting content. The infringement case may depend on whether the "segments" of video used by MasterClass (Compl. ¶38) meet the definition of a "streamlet" as defined and used in the patents. Practitioners may focus on this term because it appears to be a neologism central to the claimed invention.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a broad definition: "As used herein, streamlet refers to any sized portion of the content file 200" (’554 Patent, col. 8:39-41). This language could support a construction that covers any form of video segmentation.
- Evidence for a Narrower Interpretation: The claims and embodiments consistently describe "streamlets" as having specific properties, such as being part of "groups of streamlets" where corresponding streamlets have "an equal playback duration and each... encodes the same portion of the... video" (’554 Patent, cl. 16). This may support a narrower construction requiring fixed-duration, time-aligned segments, rather than any arbitrary portion of a file.
The Term: "determination by the end user station"
Context and Importance: This phrase from claim 16 of the ’554 Patent (and similar language in other asserted claims) captures the core inventive concept of moving bitrate-selection intelligence to the client device. The dispute will likely focus on whether the MasterClass system performs a "determination" on the client side as claimed, or if bitrate selection is influenced or controlled by the server.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the client module making requests based on "continuous observation of time intervals between successive receive times of each requested streamlet" (’554 Patent, col. 13:20-24), suggesting the determination can be based on a variety of observed network factors.
- Evidence for a Narrower Interpretation: The patent describes specific algorithms for making this determination, such as calculating a "performance ratio" and comparing it to a "trigger threshold" (’554 Patent, col. 17:15-46, FIG. 10). This could support a narrower construction requiring a specific type of analytical determination, not just a simple reaction to network conditions.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is alleged based on Defendant’s knowledge of the patents (from the March 17, 2023 letter) and its actions in "training its customers on the use of the Accused Streaming Services" through promotional materials and user guides, such as articles on how to download and use the MasterClass app (Compl. ¶¶ 44-47, 69-72). Contributory infringement is alleged on the basis that the Accused Streaming Services are a material part of the invention, are especially adapted for infringement, and are not a staple commodity suitable for substantial non-infringing use (Compl. ¶¶ 55, 80).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the patents since at least March 17, 2023, the date of Plaintiff's first notice letter (Compl. ¶¶ 1, 34). The complaint further alleges that Defendant continued its infringing activities despite this knowledge and a "high likelihood" of infringement (Compl. ¶¶ 50, 75).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the term "live event video," as recited in independent claim 16 of the lead ’554 Patent, be construed to cover the on-demand, pre-recorded content that constitutes the Accused Streaming Services? The resolution of this question could be dispositive for the ’554 Patent and may influence the interpretation of similar terms in the broader portfolio.
- A key evidentiary question will be one of technical operation: what evidence will discovery yield to show that the accused MasterClass client application performs the specific, client-side "determination" required by the claims? The case may turn on whether Plaintiff can demonstrate that the accused system functions as a client-driven "pull" system, as claimed, rather than a server-assisted or server-driven system that falls outside the claim scope.
- A central legal question will concern willfulness and damages: given the explicit pre-suit notice alleged in the complaint, including the provision of documents from prior litigation, a key focus will be on whether Defendant’s alleged lack of response and continued operation constitute the "objective recklessness" required for a finding of willful infringement and potential enhanced damages.