DCT

2:24-cv-03186

Touchstream Tech Inc v. Altice USA Inc

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00060, E.D. Tex., 05/25/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains numerous regular and established places of business in the district, including retail stores and offices, and has committed the alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Spectrum TV App and associated set-top box services infringe three patents related to systems and methods for controlling video playback on a display device using a separate personal computing device.
  • Technical Context: The technology at issue facilitates "casting," where a user selects media on a device like a smartphone and directs its playback on a different screen, such as a television, via a server-intermediated architecture.
  • Key Procedural History: The complaint alleges that Plaintiff and Defendant engaged in discussions regarding a potential partnership from 2011 through 2017, during which Plaintiff allegedly demonstrated its technology and provided Defendant with the patent application numbers for the patents-in-suit. The complaint for U.S. Patent 11,086,934 notes a disclaimer was filed for claims 1-2 and 5-7 on May 8, 2024, which will narrow the scope of that patent in this litigation.

Case Timeline

Date Event
2011-04-21 Priority Date for '251, '751, and '934 Patents
2011-06-01 Plaintiff alleges it presented its technology to Defendant (approx.)
2011-10-01 Plaintiff alleges it emailed a presentation with its patent application number to Defendant (approx.)
2013-01-15 U.S. Patent 8,356,251 Issues
2016-01-01 Accused Spectrum TV App service launches (approx.)
2021-06-29 U.S. Patent 11,048,751 Issues
2021-08-10 U.S. Patent 11,086,934 Issues
2023-05-25 First Amended Complaint Filed
2024-05-08 Disclaimer filed for claims of U.S. Patent 11,086,934

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

U.S. Patent No. 8,356,251 - "Play Control of Content on a Display Device"

  • Patent Identification: U.S. Patent No. 8,356,251, "Play Control of Content on a Display Device," issued January 15, 2013. (Compl. ¶13, ¶24).

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of using a personal computing device to control web-based media on a television, noting that viewing a web browser on a TV from a distance is cumbersome and can interfere with normal television viewing. (’251 Patent, col. 1:26-39).
  • The Patented Solution: The invention proposes a server-intermediated system where a personal device (e.g., a smartphone) can control playback on a separate display device (e.g., a TV). This is achieved by linking the two devices with a "synchronization code." The personal device sends messages to the server containing the code, information identifying the content and its required media player, and a "universal playback control command." A key feature is a server-side "universal API adapter" that translates this universal command into the specific programming code required by the particular media player on the display device. (’251 Patent, Abstract; col. 2:41-67).
  • Technical Importance: This architecture aimed to provide a unified remote-control experience for content from various internet sources that rely on different, often incompatible, media players. (Compl. ¶21, ¶22).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶48).
  • Essential elements of claim 1 include:
    • Assigning a "synchronization code" to a display device via a server system.
    • Receiving a message from a separate personal computing device that includes the "synchronization code".
    • Storing a record of the association between the devices.
    • Receiving signals from the personal device that specify a video, identify a "particular media player", and include a "universal playback control command".
    • "Converting" the "universal playback control command" into "corresponding programming code" specific to the media player by selecting from a plurality of specific commands.
    • Storing the "corresponding programming code" in a database for transmission to the display device.

U.S. Patent No. 11,048,751 - "Play Control of Content on a Display Device"

  • Patent Identification: U.S. Patent No. 11,048,751, "Play Control of Content on a Display Device," issued June 29, 2021. (Compl. ¶13, ¶24).

The Invention Explained

  • Problem Addressed: The patent addresses the same general problem of controlling media on a remote display from a personal device, particularly when different content requires different media players. (’751 Patent, col. 1:20-45).
  • The Patented Solution: This invention shifts some logic to the client side, focusing on the actions of the "content presentation device" (e.g., the TV or set-top box). The presentation device obtains a "synchronization code" and provides it to a remote device to establish an association via a server. When the presentation device receives a command message from the server, it is responsible for "selecting" the correct media player application from a plurality of available applications based on the "format of the message" or the content being referenced. (’751 Patent, Abstract; col. 12:50-13:30).
  • Technical Importance: This approach allows the display device to be more autonomous in managing and launching the correct software needed to play different types of media, as directed by a separate remote device. (’751 Patent, col. 2:36-44).

Key Claims at a Glance

  • The complaint asserts independent claim 12. (Compl. ¶53).
  • Essential elements of claim 12 include:
    • "Obtaining", by a "content presentation device", a "synchronization code".
    • "Providing" the code to a remote computing device to establish an association on a server.
    • "Receiving", by the "content presentation device", a message from the server based on that association.
    • "Selecting", by the "content presentation device", a media player application from a plurality of applications, based at least in part on the format of the received message.
    • "Controlling", by the "content presentation device", the selected media player to play the referenced content.

Multi-Patent Capsule: U.S. Patent No. 11,086,934 - "Play Control of Content on a Display Device"

  • Patent Identification: U.S. Patent No. 11,086,934, "Play Control of Content on a Display Device," issued August 10, 2021. (Compl. ¶13, ¶24).
  • Technology Synopsis: This patent describes a system where a "media receiver" (e.g., set-top box) provides its "unique identification code" to a computing device through a server. The media receiver then receives messages from the computing device via the server, with these messages referencing content and including commands that have been converted from a "universal format" into a format specific to the required media playing application. In response, the media receiver selects the correct type of media playing application based on the referenced content and controls playback using the converted commands. (’934 Patent, Abstract; Compl. ¶59).
  • Asserted Claims: The complaint asserts independent claim 17. (Compl. ¶58).
  • Accused Features: The accused features are the Spectrum TV App and set-top box system, wherein the STB allegedly receives commands originating from the mobile app via Spectrum's servers to select and control playback of content from different sources, such as Live TV and Video on Demand. (Compl. ¶¶58-59).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are the Spectrum TV App, the Spectrum set-top box (“STB”) devices, and the associated server infrastructure that facilitates their interaction. (Compl. ¶37, ¶39).

Functionality and Market Context

  • The accused system enables a user to operate the Spectrum TV App on a mobile device to browse content offerings like Live TV and Video on Demand. (Compl. ¶42). The user can then initiate playback of selected content on a television connected to a Spectrum STB. (Compl. ¶43). A screenshot provided in the complaint from a Spectrum promotional webpage shows a smartphone, a tablet, and a TV all displaying the Spectrum TV App interface, illustrating the multi-device ecosystem. (Compl. p.10). The complaint alleges that the mobile device and the STB are linked via a "synchronization code or unique identifier" (e.g., a "Receiver Name" and "Unit Address") and that a server intermediary associates the two devices. (Compl. ¶41). The mobile app can also function as a remote control, sending commands like play and pause to the STB through Spectrum's servers. (Compl. ¶44). The system is alleged to use different media players for different content types. (Compl. ¶45).
  • The complaint positions Spectrum as a major market participant, noting it had 15.1 million video customers as of late 2022. (Compl. ¶38).

IV. Analysis of Infringement Allegations

U.S. Patent 8,356,251 Infringement Allegations

The complaint includes a screenshot from a video demonstrating the accused functionality, which shows the user interface with a "Watch on TV" button that allegedly initiates the infringing method. (Compl. p.13).

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
assigning, by a server system, a synchronization code to the display device Spectrum's server system assigns a unique "Receiver Name" and "Unit Address" to a user's STB (the display device) upon activation. ¶41, ¶49 col. 5:25-40
receiving, in the server system, a message from a personal computing device... wherein the message includes the synchronization code The Spectrum TV app (personal computing device) sends messages to Spectrum's servers that include the STB's unique identifier to ensure the message is routed to the correct device. ¶41, ¶49 col. 4:46-55
storing, by the server system, a record establishing an association between the personal computing device and the display device based on the synchronization code Spectrum's servers are alleged to store a record that associates the user's mobile app with their specific STB using the device's unique identifier. ¶40, ¶41, ¶49 col. 5:5-14
receiving, in the server system... one or more signals... specifying a video file... identifying a particular media player... [and] including a universal playback control command A user's selection of content in the mobile app sends signals to the server identifying the content, the required media player (e.g., Video on Demand player), and an initial "play" command. ¶43, ¶45, ¶49 col. 4:49-54
converting, by the server system, the universal playback control command into corresponding programming code... selecting from among a plurality of specific commands The server system allegedly translates or converts the playback command from the app into a specific command understood by the particular media player on the STB. ¶44, ¶49 col. 6:10-25
storing, in a database associated with the server system, information for transmission to or retrieval by the display device... [that] includes the corresponding programming code The server system is alleged to store a record of the message, including the converted command, and relays it to the STB for execution. ¶44, ¶49 col. 4:56-67
  • Identified Points of Contention:
    • Scope Questions: Does a persistent, pre-assigned "Receiver Name" or "Unit Address" as alleged in the complaint (Compl. ¶41) constitute a "synchronization code" as the term is used in the patent, which also describes temporary, user-entered codes displayed on a splash page?
    • Technical Questions: What evidence supports the allegation that Spectrum's servers "convert" a "universal" command into a player-"specific" one, as opposed to simply relaying a command that is already in a format the STB media player is designed to receive?

U.S. Patent 11,048,751 Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
obtaining, by a content presentation device, a synchronization code associated with the content presentation device The Spectrum STB (content presentation device) is assigned and thus "obtains" a unique identifier, such as its "Receiver Name." ¶41, ¶54 col. 12:65-13:2
providing, by the content presentation device, the synchronization code to a remote computing device... [to] store an association The STB's unique identifier is made known to the user's mobile app, allowing the app to target the STB and establish an association on Spectrum's servers. ¶41, ¶54 col. 13:3-10
receiving, by the content presentation device... a first message... based... on the stored association The STB receives messages from the server that originated from the associated mobile app, such as a command to play a selected show. ¶43, ¶54 col. 13:11-18
selecting, by the content presentation device... a first media player application from a plurality of media player applications based at least in part on the first format of the first message The STB, upon receiving a message to play content, allegedly selects the appropriate player (e.g., Live TV player vs. VOD player) from those available on the device, based on the type of content referenced in the message. ¶45, ¶54 col. 13:19-25
controlling, by the content presentation device, how the selected first media player... plays the... content The STB executes the received command to control playback using the media player it selected. ¶44, ¶45, ¶54 col. 13:26-30
  • Identified Points of Contention:
    • Scope Questions: The claim requires the content presentation device (the STB) to perform the "selecting" of the media player. A central question will be whether the STB makes an autonomous selection based on the message's content, or if the server's message simply contains an explicit instruction to "launch player X," which might not satisfy the "selecting" limitation.
    • Technical Questions: On what "format of the message" does the STB allegedly base its selection of a media player? Proving the specific technical trigger for the selection will be a key evidentiary point.

V. Key Claim Terms for Construction

  • The Term: "synchronization code" (’251 Patent, Claim 1; ’751 Patent, Claim 12)
  • Context and Importance: This term is fundamental to establishing the link between the controlling device and the display device. The viability of the infringement allegations hinges on whether the accused system's persistent "Receiver Name" and "Unit Address" (Compl. ¶41) fall within the scope of this term.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification's purpose for the code is to "identify the display device on which the content is to be played," which could support interpreting it as any unique identifier that achieves this goal. (’251 Patent, col. 5:19-25).
    • Evidence for a Narrower Interpretation: The patent prominently features an embodiment where the code is displayed on a "splash page" on the display device and then manually entered or scanned by the user into the personal device, suggesting a temporary, user-initiated pairing event rather than a permanent, system-assigned hardware identifier. (’251 Patent, col. 5:31-40; FIG. 7A).
  • The Term: "universal playback control command" (’251 Patent, Claim 1)
  • Context and Importance: The infringement theory for the ’251 patent relies on the server "converting" this "universal" command. If the command sent by the mobile app is deemed player-specific from the outset, the "converting" step may not be met. Practitioners may focus on this term because it distinguishes a simple relay system from the claimed translation architecture.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes a "universal adapter" that interprets a "standard or universal command (e.g., play, pause, etc.)" and converts it into a specific command recognized by the target media player, supporting the idea of a generic initial command. (’251 Patent, col. 6:10-17; FIG. 5).
    • Evidence for a Narrower Interpretation: A defendant may argue that since the commands are implemented in code (e.g., JavaScript), any command sent by the app is inherently specific to the known system architecture, not truly "universal," and that the server's role is therefore mere routing.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Spectrum induces infringement by providing customers with the STBs and Spectrum TV App and instructing them, through advertisements and user guides, to use the accused "casting" functionality. (Compl. ¶46). This allegation is supported by a screenshot in the complaint that advertises the ability to "Cast to your connected TV right from the app." (Compl. p.10).
  • Willful Infringement: The complaint alleges that Spectrum's infringement has been willful based on pre-suit knowledge. The basis for this allegation is a series of interactions between 2011 and 2017, during which Plaintiff claims it demonstrated its technology to Spectrum and provided the patent application numbers that matured into the asserted patents. (Compl. ¶¶32-36, 50, 55, 60).

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

  • A core issue will be one of definitional scope: can the term "synchronization code," which the patents illustrate with temporary, user-entered values, be construed to cover the persistent, pre-assigned hardware identifiers ("Receiver Name", "Unit Address") allegedly used in the accused Spectrum system?
  • A key evidentiary question will be one of technical operation: does the accused system perform a true "conversion" of a "universal" command at the server (as required by the ’251 patent), or an autonomous "selection" of a media player at the set-top box (as required by the ’751 patent), or is the system a more direct relay where the server simply passes along explicit instructions?
  • A central question for willfulness and damages will be the nature of prior notice: what was the precise content of the alleged 2011-2017 communications, and does it establish that Defendant had knowledge of the specific patented inventions, thereby exposing it to a risk of infringement that it consciously disregarded?