DCT
1:24-cv-21226
Hernandez v. Stingray Digital Group Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Dr. Edwin A. Hernandez, and Egla Corp. (Florida)
- Defendant: Stingray Group Inc. (Canada), Stingray Music USA, Inc. (Delaware), Mood Media LLC (Texas), AT&T Enterprises, LLC (New York), et al.
- Plaintiff’s Counsel: Gray|Robinson, P.A.
- Case Identification: 1:24-cv-21226, S.D. Fla., 05/20/2025
- Venue Allegations: Venue is alleged to be proper based on the plaintiff inventor’s residence within the district, a substantial part of the events giving rise to the claims occurring in the district, and the defendants maintaining a regular place of business and committing acts of infringement in the district.
- Core Dispute: Plaintiffs allege that Defendants’ “UbiquiCAST” streaming music services misappropriate trade secrets and infringe three patents related to methods for delivering dynamically generated multimedia content from cloud-based systems to cable and satellite television operators.
- Technical Context: The technology at issue concerns systems that replace legacy satellite-based media delivery with a more flexible, software-defined approach that generates broadcast-ready audio-visual streams on-the-fly using web technologies.
- Key Procedural History: The complaint alleges a complex business history wherein Plaintiffs developed technology for DMX Music, which was acquired by Defendant Mood Media and subsequently by Defendant Stingray. Plaintiffs allege their technology and servers were misappropriated during these transactions and that they later uncovered evidence of infringement through public-facing project management websites and documents from a separate patent litigation between Stingray and a third party, Music Choice. The complaint also notes that Plaintiffs offered to license the patents-in-suit to Stingray prior to filing the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2012-03-XX | Plaintiffs and DMX Music enter into a Non-Disclosure Agreement. |
| 2012-XX-XX | DMX Music is acquired by Defendant Mood Media. |
| 2013-01-01 | Effective date of term sheet agreement between Plaintiffs and Mood Media. |
| 2013-12-18 | Term sheet agreement is signed. |
| 2014-03-XX | Plaintiffs discover Mood Media's DMX division was acquired by Stingray. |
| 2014-04-15 | Plaintiffs' remote access to their servers at cable operators is allegedly severed. |
| 2014-04-24 | Mood Media terminates the term sheet agreement with Plaintiffs. |
| 2014-12-22 | Earliest priority date for all Asserted Patents. |
| 2015-03-XX | Stingray allegedly first provides the accused Stingray Music TV App. |
| 2016-06-30 | Plaintiffs' patent applications are published. |
| 2017-09-15 | Plaintiffs and Stingray sign an NDA for business discussions. |
| 2018-11-06 | U.S. Patent No. 10,123,074 issues. |
| 2019-12-31 | U.S. Patent No. 10,524,002 issues. |
| 2021-04-XX | Plaintiffs allegedly discover infringement via a public Trello website. |
| 2021-10-05 | U.S. Patent No. 11,140,441 issues. |
| 2025-05-20 | Fourth Amended Complaint is filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,123,074 - Method, system, and apparatus for multimedia content delivery to cable TV and satellite operators
The Invention Explained
- Problem Addressed: The patent describes the challenges faced by cable and satellite operators (MSOs) that relied on costly and inflexible satellite links and dedicated hardware encoders to deliver media content. This legacy approach made it difficult to integrate dynamic, web-based content or unify delivery across traditional set-top boxes and modern IP-enabled devices (’074 Patent, col. 1:40-54).
- The Patented Solution: The invention proposes a system, which can be located at the MSO headend, that requests and obtains content (e.g., audio files, metadata, web elements) from a cloud-based source. It then uses this content to generate a complete media stream on-the-fly, in a format compatible with the MSO's broadcast system (e.g., MPEG Transport Stream). A key aspect is the ability to render a web page using a browser engine and generate a sequence of screen captures to create a video component for an otherwise audio-only stream, such as a music channel ('074 Patent, Abstract; col. 7:1-8). This is illustrated in Figure 5, which shows a process flow for capturing screens from a URL (526) and creating a video (530) to accompany an audio stream.
- Technical Importance: This approach provided a software-driven, cloud-based alternative to expensive, hardware-dependent satellite delivery systems, enabling greater flexibility and cost-efficiency in creating and managing broadcast channels ('074 Patent, col. 2:46-49).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-19 (Compl. ¶146).
- The essential elements of independent claim 1 (a method claim) include:
- Receiving a request for a media stream for a broadcast channel.
- Obtaining content (for multimedia items) from a source.
- Rendering a web page by a browser using the content.
- Generating a temporal sequence of screen captures of the rendered web page, where adjacent captures show a dynamic change.
- Assembling the media stream using the temporal sequence of screen captures.
- Providing the assembled stream to the content provider for broadcast.
- The complaint reserves the right to assert additional claims.
U.S. Patent No. 10,524,002 - Method, system, and apparatus for multimedia content delivery to cable TV and satellite operators
The Invention Explained
- Problem Addressed: As a continuation of the '074 Patent, the ’002 Patent addresses the same technical problem of inflexible and costly legacy media delivery systems used by cable and satellite operators ('002 Patent, col. 1:47-60).
- The Patented Solution: The '002 Patent describes the same fundamental solution: a system that unifies cloud-based content with local, on-the-fly generation of broadcast-compatible media streams. The claims cover both methods and systems that employ a caching server and a multicast server to generate and distribute content, including creating video from rendered web pages and inserting metadata into the stream ('002 Patent, Abstract; col. 6:30-51).
- Technical Importance: The technology aimed to modernize broadcast infrastructure by replacing fixed hardware with adaptable, software-based processes that could leverage web and cloud resources ('002 Patent, col. 2:49-52).
Key Claims at a Glance
- The complaint asserts independent claims 1, 4, and 7, and dependent claims 2, 5-6, and 8-9 (Compl. ¶162).
- The essential elements of independent claim 7 (a system claim) include:
- A multicast server configured to generate and output parameters for video, image, and audio content via MPEG.
- A caching server communicatively coupled to the multicast server.
- The caching server is configured to:
- Receive and store the parameters.
- Create a temporal sequence of screen captures of a rendered web page.
- Assemble the screen captures and provide the content to the multicast server for generating a multicast stream.
- A monitoring system to maintain generation even in failure cases.
- The complaint reserves the right to assert additional claims.
U.S. Patent No. 11,140,441 - Method, system, and apparatus for multimedia content delivery to cable TV and satellite operators
- Technology Synopsis: The ’441 Patent, also in the same family, claims methods and systems for creating multimedia assets at a caching unit. The process involves retrieving media files from a cloud service, creating a custom HTML user interface that includes video for each media file, and encoding these components into an MPEG transport stream format for storage and subsequent broadcast ('441 Patent, Abstract; Claim 1).
- Asserted Claims: The complaint asserts independent claims 1, 10, 25, and 26, among others (Compl. ¶178).
- Accused Features: The complaint alleges that the Accused Streaming Platforms, specifically the UbiquiCAST OSE2 servers, infringe the '441 Patent (Compl. ¶178).
III. The Accused Instrumentality
Product Identification
The accused products are Defendants' streaming services, which use the "UbiquiCAST OSE2" server and software platform (collectively, "Accused Streaming Services") (Compl. ¶115, 146).
Functionality and Market Context
The complaint alleges that the UbiquiCAST OSE2 platform is a server-based system that Stingray uses to deliver streaming music channels to Multi-channel Video Programming Distributors (MVPDs) like AT&T and Millicom (Compl. ¶75, 116-117). According to the complaint, the OSE2 platform was developed after Fall 2014 and represented a significant technological upgrade over Stingray's prior "OSE1" system by incorporating Plaintiffs' allegedly misappropriated technology (Compl. ¶79, 82, 121). The system is alleged to generate audio-visual streams by, among other things, using web assets and creating visual displays to accompany audio tracks for broadcast on music channels (Compl. ¶35, 43, 97-98). One probative visual provided in the complaint is a screenshot of a Trello trouble ticket which references key components of the accused system, including "stillpicgenerator, ubimetaserver and ubiquicast" (Compl. p. 28). The complaint alleges that the adoption of this OSE2 technology was fundamental to Stingray's subsequent revenue growth and increased market position (Compl. ¶121-122).
IV. Analysis of Infringement Allegations
The complaint references preliminary infringement claim charts attached as exhibits, which were not available for this analysis. The following summary is based on the narrative allegations and visual evidence within the complaint itself.
'074 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| rendering a web page by a browser using the content; | The complaint alleges the UbiquiCAST OSE2 system uses web-based elements like HTML, javascripts, and CSS to generate visual representations for its music channels, and that it relies on a headless rendering engine. | ¶35, 42-45 | col. 7:1-5 |
| generating a temporal sequence of screen captures of the rendered web page, where each screen capture defines all the content of the web page at a given time, and at least two adjacent screen captures illustrate a dynamic change... | The complaint alleges that the accused system's "StillPict Generator" component creates visual components "on-the-fly," including generating "still images" from a caching unit that are broadcast as an MPEG Transport Stream. | ¶47-48, 97-98 | col. 15:55-63 |
| assembling the at least one media stream using the temporal sequence of screen captures; | The complaint alleges, with support from a Trello screenshot, that the UbiquiCAST OSE2 system assembles and broadcasts streams in multiple formats, including audio with MPEG-2 data and audio with H.264 data. This visual shows configuration templates for "audio + OSE2 MPEG-2 + data" and "audio + OSE2 H.264 + data," implying the assembly of different components. | ¶105; p. 31 | col. 8:8-14 |
| providing the at least one media stream to the content provider for broadcast on the broadcast media channel. | The complaint alleges that Stingray provides the output of its UbiquiCAST OSE2 servers to MVPDs, including AT&T for its U-verse service and Millicom for its TIGO service. | ¶116-117 | col. 8:15-18 |
Identified Points of Contention
- Technical Questions: A primary factual dispute will likely concern the precise operation of the accused "StillPict Generator." The complaint’s case relies heavily on inferences from Trello trouble tickets (Compl. ¶96-98). The key question is whether discovery will confirm that this component functions by "rendering a web page by a browser" and generating a "temporal sequence of screen captures" as claimed, or if it uses a fundamentally different, non-infringing technical method.
- Scope Questions: The infringement analysis raises the question of whether the alleged generation of a series of static but updated images (e.g., a new screen for each new song title) satisfies the claim requirement for a "temporal sequence of screen captures" where "at least two adjacent screen captures illustrate a dynamic change." The interpretation of "dynamic change" will be critical.
V. Key Claim Terms for Construction
The Term: "rendering a web page by a browser" ('074 Patent, Claim 1)
- Context and Importance: This term is central to the infringement theory. Plaintiffs allege the accused system uses a "headless rendering engine" (Compl. ¶44), aligning with the patent's disclosure. The case may turn on whether the accused system's method of generating visuals from web assets (HTML, CSS) qualifies as "rendering by a browser."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides examples like "PhantomJS or Safari," but also refers more generally to a "browser-rendering engine compatible with HTML4/5," which a plaintiff may argue covers any software component that interprets web standards to produce a visual output, not just a full-featured commercial browser ('074 Patent, col. 7:1-5).
- Evidence for a Narrower Interpretation: A defendant may argue the term requires an engine with the full capabilities of the named examples (PhantomJS, Safari). The patent’s detailed description of capturing screens from a URL to create a video from an audio file could be used to argue the term is tied to this specific, more complex functionality, potentially narrowing its scope ('074 Patent, col. 7:18-34).
The Term: "temporal sequence of screen captures" ('074 Patent, Claim 1)
- Context and Importance: Plaintiffs' allegation is that the accused system generates visuals "on-the-fly" (Compl. ¶47), which they map to this limitation. A dispute will likely arise over whether creating a series of discrete, updated static images (e.g., for song title changes) meets the definition of a "temporal sequence."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a frame rate or require video-like fluidity. A plaintiff may argue that any collection of two or more screen captures generated over a period of time, where the content changes between them, constitutes a "temporal sequence" with a "dynamic change."
- Evidence for a Narrower Interpretation: The claim requires that adjacent captures "illustrate a dynamic change." A defendant might argue this implies a more fluid, video-like transition rather than the simple replacement of one static screen with another. The specification’s discussion of creating a "video file from all the screens captured" could be used to argue the term implies a process that results in a conventional video format ('074 Patent, col. 7:27-31).
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendants induce infringement by providing the Accused Streaming Platforms to their customers (e.g., AT&T) with the knowledge and intent that the customers will use them in an infringing manner (Compl. ¶152). It further alleges contributory infringement, stating the platforms are not staple articles of commerce and have been especially adapted to infringe the patents (Compl. ¶153).
Willful Infringement
The complaint makes detailed allegations to support willfulness. It claims Defendants had pre-suit knowledge of the technology through the alleged misappropriation of Plaintiffs’ trade secrets and servers in 2014 (Compl. ¶82, 90). Further, it alleges that Plaintiffs directly approached Stingray to license the patent portfolio beginning in 2017 and provided copies of the issued '074 and '002 patents, but Stingray showed no interest (Compl. ¶86-89).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present two central questions for the court, one turning on evidence and the other on claim construction.
- A core issue will be one of evidentiary proof: can Plaintiffs' reconstruction of the UbiquiCAST OSE2 system's functionality, which is based largely on high-level descriptions in public Trello tickets and prior litigation documents, be substantiated by technical evidence like source code and expert testimony? The outcome may depend on whether the alleged "StillPict Generator" operates in the manner Plaintiffs claim.
- A key legal question will be one of definitional scope: can the claim term "temporal sequence of screen captures" that "illustrate a dynamic change" be construed to cover the accused system's alleged method of generating a series of updated, but individually static, screens for music channels? The resolution of this claim construction issue may significantly influence the finding of infringement.