Rothschild Broadcast Distribution Systems LLC v. Mubi

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Rothschild Broadcast Distribution Systems, LLC (Texas)
  • Defendant: Mubi, Inc. (Delaware)
  • Plaintiff’s Counsel: Watson LLP
• Case Identification: 1:19-cv-00998, S.D.N.Y., 02/01/2019
• Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant is deemed a resident of the district and/or has a regular and established place of business there.
• Core Dispute: Plaintiff alleges that Defendant’s media streaming and download service infringes a patent related to systems for storing and delivering media content in a cloud-based environment.
• Technical Context: The technology addresses on-demand media systems that manage user requests to either stream content immediately or store it for later viewing, based on user registration and content availability.
• Key Procedural History: The patent-in-suit, U.S. Patent No. 8,856,221, is a continuation of U.S. Application No. 13/300,798, which issued as U.S. Patent No. 8,307,089. No other significant procedural events are mentioned in the complaint.

Case Timeline

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

U.S. Patent No. 8,856,221 - "System and Method for Storing Broadcast Content in a Cloud-based Computing Environment," issued October 7, 2014

The Invention Explained

• Problem Addressed: The patent describes the economic and technical inefficiencies of prior art on-demand media systems. These include the high data storage costs for providers who must store all available content, and inflexible pricing models (e.g., flat-rate subscriptions or per-video fees) that may not align with a consumer's actual usage ('221 Patent, col. 1:36-58). It also notes that fulfilling a consumer's request for content not currently on a server could take "weeks to months" ('221 Patent, col. 2:5-8).
• The Patented Solution: The invention describes a system centered on a remote server that can differentiate between two types of user requests. A "storage request message" directs the server to acquire and store specific media content for a set period, while a "content request message" asks to stream or download media that is already stored ('221 Patent, Abstract). Before processing either request, the system first verifies that the request originates from a registered consumer device, as illustrated in the system architecture of Figure 1 ('221 Patent, Fig. 1; col. 4:41-53). This dual-request architecture aims to provide a more tailored and on-demand approach to media storage and delivery.
• Technical Importance: This approach suggests a system that could potentially tailor storage costs and service offerings to individual consumer demands rather than relying on a one-size-fits-all model of pre-storing all possible content ('221 Patent, col. 2:13-17).

Key Claims at a Glance

• The complaint asserts infringement of at least independent Claim 1 (Compl. ¶13).
• The essential elements of Claim 1 are:
  • A first server with a receiver and a processor.
  • The receiver is configured to receive a "request message" containing an indication of the "requested media content" and a "consumer device identifier."
  • The processor first determines if the "consumer device identifier" corresponds to a "registered consumer device."
  • If registered, the processor then determines if the message is a "storage request message" or a "content request message."
  • If it is a "storage request message," the processor determines if the content is "available for storage."
  • If it is a "content request message," the processor "initiates delivery" of the content.
• The complaint reserves the right to assert other claims of the ’221 Patent (Compl. ¶13).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is the "MUBI system and app," which the complaint characterizes as a media content storage and delivery system and service (Compl. ¶14).

Functionality and Market Context

• The MUBI service provides users with access to a curated selection of films, which can be either streamed for immediate viewing or downloaded to a mobile device for offline access (Compl. ¶15). The complaint alleges that the service relies on "several dozen media servers at key Internet hubs around the world" to efficiently route user requests (Compl. ¶15).
• Access to the service requires user registration and login, which the complaint alleges associates a user's device with their account and subscription status (Compl. ¶17, ¶18). A screenshot of the MUBI login interface is provided as evidence of this requirement (Compl. p. 4).
• The service operates on a tiered subscription model, where features such as the ability to download films are restricted to users on a paid "MONTHLY/YEARLY" plan, as opposed to a "BASIC" plan (Compl. ¶20, ¶24).

IV. Analysis of Infringement Allegations

’221 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The complaint's theory hinges on the user's selection of a "Download Button" versus a "Play Button" mapping directly to the patent's "storage request message" and "content request message" (Compl. p. 8). A central question may be whether these two user interface actions generate technically distinct message types at the protocol level, as contemplated by the claim, or if they represent a single message type with a different client-side handling instruction.
• Technical Questions: Claim 1 requires the processor to determine if content is "available for storage." The complaint alleges this is met by the MUBI server checking the user's subscription tier (Compl. ¶20). This raises the question of whether the claimed function is limited to checking user permissions, or if it also requires a technical verification of the content's existence and rights status on the server, a functionality alluded to elsewhere in the complaint (Compl. ¶23).

V. Key Claim Terms for Construction

The Term: "storage request message"

• Context and Importance: The distinction between a "storage request message" and a "content request message" is foundational to the asserted claim's logic. The infringement case rests on the argument that a user clicking "Download" generates the former and clicking "Play" generates the latter. The construction of this term will determine if that mapping is legally and technically sound.
• Intrinsic Evidence for a Broader Interpretation: The patent specification describes this functionally as a message that "may include media data indicating the consumer device is requesting that remote server 16 store specific media content for an amount of time" ('221 Patent, col. 11:23-27). This focus on intent and function could support a broader reading.
• Intrinsic Evidence for a Narrower Interpretation: The specification also notes that this message "may have a triggering flag" ('221 Patent, col. 11:27-28). A defendant could argue this suggests a specific data structure is required, potentially narrowing the term to only those messages that contain such a flag.

The Term: "consumer device identifier"

• Context and Importance: The complaint alleges that a user's account credentials (e.g., email and password) satisfy the "consumer device identifier" limitation, which is then checked to determine if it is a "registered consumer device" (Compl. ¶18). The viability of this infringement theory depends on whether this user-centric data can be construed as a device-centric identifier.
• Intrinsic Evidence for a Broader Interpretation: The patent states that the request message may include "consumer data" and "device identification number(s)" ('221 Patent, col. 11:10-11). "Consumer data" is described as including information like addresses and financial details, suggesting the identifier is not strictly limited to a hardware ID ('221 Patent, col. 10:15-21).
• Intrinsic Evidence for a Narrower Interpretation: The plain language of the term "device identifier" suggests an identifier tied to the hardware itself. The specification lists "device identification number, model number and operating system" as examples of "consumer device data," which could support an argument that the identifier must be specific to the physical device, not the user account ('221 Patent, col. 10:12-15).

VI. Other Allegations

Willful Infringement

• The complaint does not plead specific facts to support a claim of willful infringement, such as alleging that Defendant had pre-suit knowledge of the ’221 Patent.

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

The resolution of this dispute may turn on the following core questions:

1. A question of definitional scope: Can the distinct user actions of clicking "Download" versus "Play" in the accused MUBI application be construed to constitute two separate and distinct message types—a "storage request message" and a "content request message"—as required by the sequential logic of Claim 1? Or does the evidence show they are variations of a single request type?

2. A question of functional mapping: Does the MUBI system's alleged check of a user's subscription plan to permit or deny a download satisfy the claim limitation of determining "whether the requested media content is available for storage"? The court may need to decide whether this claim element requires only a check of user authorization, as alleged, or a more comprehensive technical verification of the content's availability and status on the server.