DCT

1:24-cv-21226

Hernandez v. Stingray Digital Group Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-21226, S.D. Fla., 07/15/2024
  • Venue Allegations: Venue is based on Plaintiff Dr. Hernandez residing in the district, a substantial part of the events giving rise to the claims allegedly occurring in the district, and domestic Defendants having a regular place of business and committing acts of infringement there.
  • Core Dispute: Plaintiffs allege that Defendants' "UbiquiCAST OSE2" streaming platform infringes three patents and misappropriates trade secrets related to cloud-based multimedia content delivery for cable and satellite operators.
  • Technical Context: The technology concerns systems that replace legacy satellite delivery of music channels with more efficient, cloud-based solutions that generate dynamic audio-visual streams using web technologies.
  • Key Procedural History: The complaint alleges that evidence of misappropriation and infringement was discovered through documents from a prior patent litigation between Defendant Stingray and a third party, Music Choice, in the Eastern District of Texas. The complaint also notes that Plaintiffs approached Defendant Stingray to license the technology prior to filing suit.

Case Timeline

Date Event
2012-03-01 NDA signed between EGLA CORP and DMX (later acquired by Mood Media)
2013-12-18 EGLA CORP and Mood Media/DMX sign term sheet agreement
2014-03-01 Plaintiff Hernandez allegedly discovers Mood Media/DMX acquired by Stingray
2014-04-15 Plaintiff Hernandez's remote access to his servers allegedly severed
2014-12-22 Earliest priority date for ’074, ’002, and ’441 Patents
2015-03-01 Alleged creation date of accused Ubiquicast OSE2 server
2016-06-30 Publication date of patent applications, disclosing alleged trade secrets
2017-09-15 NDA signed between EGLA CORP and Stingray 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
2021-04-07 Plaintiff Hernandez allegedly discovers evidence of infringement on trello.com
2021-10-05 U.S. Patent No. 11,140,441 issues
2024-07-15 Complaint 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," issued November 6, 2018.

The Invention Explained

  • Problem Addressed: The patent describes the historical method of delivering media content to cable and satellite operators as reliant on satellite links and dedicated hardware encoders, which are expensive and inflexible systems for distributing content like music channels (’074 Patent, col. 1:41-54).
  • The Patented Solution: The invention discloses a system, which can be located at a cable operator's headend, that replaces traditional satellite feeds. This system receives a request for a media stream, obtains the necessary content (e.g., audio files, images, web data) from a cloud-based source via the internet, and then generates a multimedia stream in a format compatible with the cable operator’s broadcast equipment, such as an MPEG Transport Stream (’074 Patent, Abstract; col. 4:36-44). A key aspect is the use of web technologies, like a browser engine, to render a webpage and capture a sequence of images from it to create a dynamic video component for the stream (’074 Patent, col. 7:1-9).
  • Technical Importance: The technology aimed to unify modern, flexible cloud-based content delivery with the established infrastructure of cable and satellite operators, allowing for more dynamic and cost-effective channel generation (’074 Patent, col. 2:45-49).

Key Claims at a Glance

  • The complaint asserts claims 1-19 (Compl. ¶146).
  • Independent claim 1 recites a computer-implemented method with the following essential elements:
    • receiving, from a content provider, a request for at least one media stream for playback on a broadcast media channel
    • obtaining content corresponding to the plurality of multimedia items from at least one source offering the content in at least one first format
    • rendering a web page by a browser using the content
    • 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 of at least a portion of the content over time
    • assembling the at least one media stream using the temporal sequence of screen captures
    • providing the at least one media stream to the content provider for broadcast on the broadcast media channel

U.S. Patent No. 10,524,002 - "Method, system, and apparatus for multimedia content delivery to cable TV and satellite operators," issued December 31, 2019.

The Invention Explained

  • Problem Addressed: As a continuation of the ’074 Patent, this patent addresses the same technical problem of replacing inflexible, hardware-based satellite delivery systems for media content (’002 Patent, col. 1:44-53).
  • The Patented Solution: The patent describes a system architecture for implementing the cloud-to-cable delivery solution. It details a system comprising a multicast server to generate and output content parameters, a caching server to store those parameters and create video/audio streams, and a monitoring system to ensure operational stability (’002 Patent, col. 16:41-51). The solution relies on dynamically creating a video stream from screen captures of a rendered web page and combining it with an audio stream to form a complete multimedia channel (’002 Patent, col. 16:48-51).
  • Technical Importance: The invention provides a specific, fault-tolerant system architecture for reliably implementing the dynamic, web-driven content generation and delivery process within a cable operator's environment (’002 Patent, col. 16:49-51).

Key Claims at a Glance

  • The complaint asserts claims 1-2 and 4-9 (Compl. ¶162).
  • Independent claim 7 recites a system with the following essential elements:
    • a multicast server configured to generate parameters relating to at least one of video content, image content and audio content, and configured to output the parameters via MPEG outputs
    • a caching server communicatively coupled to the multicast server, configured to receive and store the parameters, and create a temporal sequence of screen captures of a rendered web page
    • the caching server is further configured to assemble the temporal sequence of screen captures and provide content to the multicast server for generating a multicast stream
    • a monitoring system configured to maintain generation of video and audio files, even in failure cases

U.S. Patent No. 11,140,441 - "Method, system, and apparatus for multimedia content delivery to cable TV and satellite operators," issued October 5, 2021.

  • Technology Synopsis: This continuation patent details a method performed at a caching unit for creating multimedia assets. The method involves determining sufficient storage space, retrieving media files from a cloud service, creating a custom HTML user interface that includes video for each file, and then encoding and encapsulating the files into an MPEG transport stream format for broadcast (’441 Patent, Claim 1).
  • Asserted Claims: Claims 1-14 and 16-26 are asserted (Compl. ¶178). Independent claims include 1, 10, 25, and 26.
  • Accused Features: The complaint accuses the UbiquiCAST OSE2 platform's functionality for creating and delivering streaming music channels to cable and IPTV service providers (Compl. ¶178).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as the "Accused Streaming Platforms," which specifically include the "UbiquiCAST OSE2" server and associated software and services operated by Defendant Stingray (Compl. ¶¶115, 146).

Functionality and Market Context

The complaint alleges that the UbiquiCAST OSE2 platform is a cloud-based system used to create and deliver streaming music channels to Multi-channel Video Programming Distributors (MVPDs) like AT&T and Millicom (Compl. ¶¶35, 116-117). The system is alleged to generate visual components, described as "still images" or "on-the-fly video assets," that are combined with audio streams (Compl. ¶¶44, 47). Evidence cited in the complaint, allegedly from internal Stingray trouble tickets, suggests the system includes components named "StillPic Generator" and "UBI_MONIT_LINUX" and uses technologies like FFMPEG, H.264 video encoding, and multicast IP addressing (Compl. ¶¶98, 102). The complaint alleges that the launch of this OSE2 platform was fundamental to Stingray's growth and ability to gain a leadership position in the industry (Compl. ¶121).

IV. Analysis of Infringement Allegations

'074 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
receiving, from a content provider, a request for at least one media stream for playback on a broadcast media channel... The UbiquiCAST OSE2 system is allegedly configured to receive client-specific requirements and service requests from cable operators (MVPDs) for music channels. ¶¶85, 116 col. 2:50-54
...rendering a web page by a browser using the content; The complaint alleges the system uses a "headless rendering engine" and incorporates "web assets" and "web user interfaces" to generate visual components for the media streams. ¶¶44, 45 col. 7:1-4
generating a temporal sequence of screen captures of the rendered web page, where ... at least two adjacent screen captures illustrate a dynamic change of at least a portion of the content over time; This is mapped to the alleged function of creating "on-the-fly video assets" or "still images." The complaint points to a "StillPic Generator" component, allegedly referenced in internal Stingray documents, as performing this function. ¶¶47, 97, 98 col. 7:27-34
assembling the at least one media stream using the temporal sequence of screen captures; The system is alleged to combine the generated visual assets with audio to create a complete channel, which is then broadcast as an MPEG Transport Stream. ¶¶106, 47 col. 8:6-14
providing the at least one media stream to the content provider for broadcast on the broadcast media channel. The final stream is allegedly provided to operators like AT&T for distribution on its U-verse service and to Millicom for its TIGO service. An image from a trouble ticket shows the system preparing various config templates, including for MPEG-2 and H.264, for delivery. ¶¶116, 117, 105; Ex. 15 at EGLA-TRELLO-000654 col. 8:15-17

'002 Patent Infringement Allegations

Claim Element (from Independent Claim 7) Alleged Infringing Functionality Complaint Citation Patent Citation
a multicast server configured to generate parameters... The complaint cites trouble tickets allegedly showing the UbiquiCAST OSE2 system uses and manages "Multicast IP Addresses" and changes stream IP configurations for customers. One ticket is titled "Cablevision -- Stream IP change request." ¶¶102, 96; Ex. 15 at EGLA-TRELLO-000438 col. 5:1-10
a caching server communicatively coupled to the multicast server, and configured to ... create a temporal sequence of screen captures of a rendered web page... The system's alleged "StillPic Generator" is accused of being a component of the caching unit that generates visual assets. A trouble ticket allegedly shows the creation of a directory for background PNGs ("/data/stillpic/background") for OSE2 servers. ¶¶97, 98, 103, 106; Ex. 15 at EGLA-TRELLO-000496 col. 5:40-44; col. 6:55-63
a monitoring system configured to maintain generation of video and audio files, even in failure cases. The complaint alleges the accused system uses a monitoring tool named "MONIT." A trouble ticket allegedly describes creating a new component, "UBI_MONIT_LINUX," to facilitate "monit alerts for various components, e.g. stillpicgenerator, ubimetaserver and ubiquicast." ¶¶102, 98; Ex. 15 at EGLA-TRELLO-000530 col. 16:49-51

Identified Points of Contention

  • Scope Questions: A central question will be whether the accused system's alleged generation of "still images" or on-the-fly video from web assets meets the ’074 patent's claim limitation of "generating a temporal sequence of screen captures ... where at least two adjacent screen captures illustrate a dynamic change." The defense may argue that a periodically updated static image is not a "temporal sequence" illustrating a "dynamic change."
  • Technical Questions: The infringement case appears heavily reliant on Plaintiffs' interpretation of internal Stingray development tickets from a public Trello board. A key point of contention will be whether discovery confirms that components with names like "StillPic Generator" actually perform the specific functions of rendering a web page and generating screen captures as required by the claims, or if they are simply graphics tools with different functionality.

V. Key Claim Terms for Construction

The Term: "temporal sequence of screen captures ... where at least two adjacent screen captures illustrate a dynamic change" ('074 Patent, Claim 1)

  • Context and Importance: This term is the core of the claimed invention's method for creating video content. Its construction will be critical because Plaintiffs' allegations focus on the generation of "still images" and "on-the-fly video assets." Whether this activity falls within the scope of a "temporal sequence" with a "dynamic change" will likely determine infringement.
  • Intrinsic Evidence for a Broader Interpretation: The specification discusses creating a video component from "one or more screen captures from a website" (’074 Patent, col. 8:62-64), which a party might argue does not strictly require motion between every capture.
  • Intrinsic Evidence for a Narrower Interpretation: The plain language of the claim itself requires a "sequence" over time ("temporal") and an illustration of "dynamic change" between "at least two adjacent screen captures." This language suggests that a single, static image, even if periodically updated, may not suffice. The specification also describes a process to "create a video file from all the screens captured" (’074 Patent, col. 7:29-33), which implies assembling a series of frames to produce video, not just displaying a still picture.

The Term: "rendering a web page by a browser" ('074 Patent, Claim 1)

  • Context and Importance: Plaintiffs allege the accused system uses a "headless rendering engine" (Compl. ¶44), which they map to this limitation. The definition is important because the defense could argue their "StillPic Generator" is not a "browser" and does not "render a web page," but is a different type of graphics generation tool.
  • Intrinsic Evidence for a Broader Interpretation: The specification explicitly contemplates a broad, functional definition, stating the rendering can be done "using WebKit (e.g. PhantomJS or Safari) or any other browser-rendering engine" (’074 Patent, col. 7:1-4). The reference to PhantomJS, a well-known headless browser, may support an interpretation that covers non-visual rendering engines.
  • Intrinsic Evidence for a Narrower Interpretation: A party could argue that the term requires the full functionality of a web browser, including processing complex HTML, CSS, and JavaScript, and that the accused component is a more limited tool. The dispute may turn on the specific technical capabilities of the accused "StillPic Generator."

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants induce infringement by marketing the Accused Streaming Platforms and providing instructions to customers like AT&T and Millicom, knowing their use constitutes infringement (Compl. ¶¶152, 168). Contributory infringement is alleged on the basis that the Accused Streaming Platforms are not staple articles of commerce and are especially adapted to infringe the patents (Compl. ¶¶153, 169).
  • Willful Infringement: Willfulness allegations are based on both pre-suit and post-filing knowledge. The complaint alleges Defendants had knowledge of the patents since at least 2018, when Plaintiff Hernandez offered to license the portfolio to Stingray, and that infringement continued after this notice (Compl. ¶¶87, 89, 155).

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

  • A central evidentiary question will be one of technical proof: the complaint's infringement theory relies heavily on interpretations of internal development tickets. Will discovery substantiate the claim that accused components like "StillPic Generator" and "UBI_MONIT_LINUX" actually operate in the manner required by the patent claims, or will it reveal a functional mismatch?
  • The case will also turn on a core issue of claim construction: can the claim term "temporal sequence of screen captures" that illustrates a "dynamic change" be construed to cover the accused system's alleged generation of "still images" or on-the-fly video assets? The court's interpretation of this phrase may be dispositive for infringement.
  • A further question involves the interplay of trade secret and patent law: Plaintiffs allege the technology was first a trade secret that was misappropriated, and then later patented. The case will require untangling these claims to determine what specific information was a protected trade secret, when it was allegedly taken, and whether the defendants' subsequent actions constitute infringement of the patent claims that issued after the technology was publicly disclosed in the patent application.