Diatek Licensing LLC v. AccuWeather Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Diatek Licensing LLC (Texas)
  • Defendant: AccuWeather, Inc. (Pennsylvania)
  • Plaintiff’s Counsel: Kent & Risley LLC
• Case Identification: 1:21-cv-11144, S.D.N.Y., 06/07/2022
• Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant maintains a regular and established place of business in the district and has committed alleged acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s use of HTTP Live Streaming (HLS) for video content delivery on its website infringes two patents related to managing and transmitting digital video streams.
• Technical Context: The patents address methods for enabling "trick mode" functionalities (e.g., fast forward, seeking) in digital video, a foundational technology for on-demand video streaming and digital video recorders (DVRs).
• Key Procedural History: The complaint notes that the patents-in-suit were issued after a "full and fair examination" by the U.S. Patent & Trademark Office. No other prior litigation, licensing, or post-grant proceedings are mentioned.

Case Timeline

Date	Event
1999-11-22	’752 Patent Priority Date
2000-11-20	’752 Patent Application Filing Date
2003-11-14	’828 Patent Priority Date
2004-11-12	’828 Patent Application Filing Date
2006-03-09	’752 Patent Notice of Allowance
2006-07-18	’752 Patent Issue Date
2012-02-14	’828 Patent Notice of Allowance
2012-06-05	’828 Patent Issue Date
2022-06-07	First Amended Complaint Filing Date

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

U.S. Patent No. 7,079,752 - “Process for Recording a Scrambled MPEG Stream,” issued July 18, 2006

The Invention Explained

• Problem Addressed: The patent describes a problem in the art where implementing "trick mode" functions—such as fast forward, rewind, or freeze frame—is difficult for digital video streams recorded in a scrambled (i.e., encrypted) format, because these functions require fast access to and decoding of specific video data (Compl. ¶16; ’752 Patent, col. 1:23-32).
• The Patented Solution: The invention proposes a process that, during the recording of the main scrambled video stream, runs a parallel process. This parallel process descrambles the video data to extract "additional data" needed for trick modes, such as pointers to the start of images and image sizes. This metadata, or "additional data," is then recorded on the storage medium alongside the scrambled stream, allowing a device to perform trick mode functions by referencing the easily accessible additional data without needing to descramble the entire video stream in real-time (Compl. ¶18; ’752 Patent, col. 1:38-46, col. 3:14-20).
• Technical Importance: This approach provided a method to combine the security of scrambled content with the user-friendly features of DVR-style trick modes, a key challenge for early digital video recording and pay-TV systems (Compl. ¶15; ’752 Patent, col. 1:13-22).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶63).
• Essential elements of Claim 1 include:
  • A process for recording a scrambled digital video stream on a recording medium.
  • In addition to recording the scrambled data, the process includes the steps of:
  • descrambling the scrambled data of the stream to extract "additional data" that is required for a "trick mode" function; and
  • recording this "additional data" on the recording medium.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,195,828 - “Method for Discontinuous Transmission, in Sections, of Data in a Network of Distributed Stations...,” issued June 5, 2012

The Invention Explained

• Problem Addressed: The patent explains that standard transport protocols like HTTP-GET were designed for transmitting entire files continuously and are not well-adapted for the discontinuous, sectional data transmission required to implement trick modes for real-time audio/video streams in a network (Compl. ¶45; ’828 Patent, col. 1:55-67).
• The Patented Solution: The invention extends the HTTP-GET method to support trick modes. It defines a method where a client sends an HTTP GET request that includes new, special parameters for playback speed, direction, and an initial position. In response, a source appliance discontinuously transmits only the selected video frames (e.g., I-frames and P-frames for fast forward) in discrete sections, or "chunks." The response uses an "extended HTTP chunked transfer encoding mode" where each chunk contains both the video frame data and metadata, such as a time stamp, in a "commentary line" (Compl. ¶48, ¶51; ’828 Patent, col. 2:35-52, col. 2:63-3:8).
• Technical Importance: This invention describes a way to adapt the ubiquitous HTTP protocol for sophisticated, non-linear video streaming, enabling VCR-like controls over networked video streams, a precursor to modern adaptive bitrate streaming technologies (Compl. ¶50; ’828 Patent, col. 2:53-60).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶68).
• Essential elements of Claim 1 include:
  • A method for discontinuous transmission, in sections, of encoded video data.
  • Creating an HTTP GET request for a fast search operation that states a playback speed parameter and an initial position.
  • Transmitting the HTTP GET request to a source appliance.
  • Receiving an HTTP response from the source appliance with discontinuous, selected video frames using an "extended HTTP chunked transfer encoding mode."
  • This mode uses chunks where each chunk has two parts: a first part with information about the frame's starting time (positioned in a "commentary line"), and a second, different part with the complete encoded video frame itself.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is Defendant's system for delivering video content, which allegedly utilizes HTTP Live Streaming (HLS) technology on its website, accuweather.com (Compl. ¶63, ¶68).

Functionality and Market Context

• The complaint alleges that AccuWeather makes, uses, sells, or offers services that incorporate the patented inventions through its utilization of HLS for video delivery to customers and viewers (Compl. ¶62-63, ¶67-68). HLS is an adaptive bitrate streaming protocol that works by breaking a video stream into a sequence of small, HTTP-based file segments. A client player downloads a playlist file (e.g., an .m3u8 manifest) that contains metadata and a list of the available segments, and then requests these segments over HTTP, enabling playback that can adapt to changing network conditions. The complaint does not provide further technical details on Defendant's specific HLS implementation. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges infringement of at least claim 1 of both the ’752 and ’828 patents, referencing preliminary claim charts in Exhibits E and F, respectively (Compl. ¶63, ¶68). As these exhibits were not provided with the complaint, the following analysis is based on the narrative infringement theory.

'752 Patent Infringement Allegations

The complaint does not provide sufficient detail for analysis of how AccuWeather's HLS system is alleged to meet each element of claim 1. Based on the technology, a potential theory of infringement may be that AccuWeather’s server-side video processing, which creates the HLS video segments and the corresponding .m3u8 playlist file, performs the claimed "descrambling" to "extract... additional data." In this theory, the playlist file, which contains metadata and pointers to the video segments, could be argued to be the claimed "additional data," and its creation and storage alongside the video segments could be alleged to be the "recording of these additional data on the recording medium."

'828 Patent Infringement Allegations

The complaint does not provide sufficient detail for analysis of how AccuWeather's HLS system is alleged to meet each element of claim 1. A potential infringement theory may assert that the HLS protocol practices the claimed method. A client device using HLS first sends an HTTP GET request for the playlist file. This could be mapped to the claimed "creation of an HTTP GET request" that implicitly defines playback parameters. The client then sends subsequent HTTP GET requests for individual video segments listed in the playlist, which could be characterized as the "discontinuous transmission, in sections." A key point of contention, as discussed below, will be whether the HLS protocol, which uses standard HTTP requests and a separate manifest file, can be considered the claimed "extended HTTP chunked transfer encoding mode" with its specific two-part chunk structure.

V. Key Claim Terms for Construction

For the ’752 Patent:

• The Term: "descrambling"
• Context and Importance: This term appears central to the inventive process. Practitioners may focus on this term because its definition will determine whether standard video encoding or transcoding processes, which are used to generate HLS streams, fall within the scope of the claims. The patent links "scrambled form" to controlling access, suggesting decryption (Compl. ¶15). The infringement allegation, however, targets HLS, which may not involve traditional encryption/decryption at the point where metadata is generated.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not explicitly define the term. A party could argue it broadly covers any processing of a protected or proprietary video format to extract underlying structural information, not just decryption. The specification describes extracting "ancillary data or additional data" such as "the size of the images, the pointers defining the image starts, the image types, etc." (’752 Patent, col. 3:14-20), which is a result of video processing, not just decryption.
  • Evidence for a Narrower Interpretation: The specification repeatedly connects "scrambled" data with access control and the need for "keys" to perform descrambling, strongly implying a cryptographic context (’752 Patent, col. 3:1-4; col. 4:62-67). An opposing party could argue that "descrambling" requires the reversal of a specific scrambling/encryption step and is not equivalent to general video transcoding.

For the ’828 Patent:

• The Term: "extended HTTP chunked transfer encoding mode"
• Context and Importance: This term defines the specific mechanism for the "discontinuous transmission." Its construction is critical because HLS operates differently, using a manifest file to guide standard HTTP GET requests for separate segment files. The dispute will be whether HLS is an equivalent to, or an implementation of, the claimed "extended... mode."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that "extended" simply means a non-standard use of HTTP chunked transfer that achieves the same goal of discontinuous transmission for trick modes. They may argue that the combination of the HLS manifest file and subsequent segment downloads is a system that functions as an "extended mode."
  • Evidence for a Narrower Interpretation: The patent provides a specific and detailed structure for the claimed mode: "each chunk includes one complete respective selected encoded video frame in a second part and information about a starting time...in a first part," with the timing information "being positioned in a commentary line of the first part" (’828 Patent, col. 13:3-13). This language suggests a specific format for a single HTTP response, which is structurally different from the HLS method of using a separate manifest file to orchestrate multiple, standard HTTP requests.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead induced or contributory infringement. The allegations are framed as direct infringement by Defendant for "making, using, selling, offering for sale, and/or importing" the accused services (Compl. ¶62, ¶67).
• Willful Infringement: The complaint does not include a count for willful infringement or allege that Defendant had pre-suit knowledge of the patents. The prayer for relief includes a request for attorneys' fees under 35 U.S.C. § 285, asserting the case is "exceptional," but does not plead the factual basis for this assertion (Compl. ¶70.E).

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

This dispute appears to center on whether the architecture of the widely-used HLS protocol can be mapped onto the specific claim language of patents from an earlier era of digital video technology. The resolution will likely depend on claim construction.

1. A core issue will be one of technical translation: Does the server-side process of creating an HLS manifest file and video segments from a source video meet the ’752 Patent's requirement of "descrambling" a "scrambled" stream to extract "additional data"? The case may turn on whether "descrambling" is limited to cryptographic decryption or can be construed more broadly to cover video transcoding and metadata extraction.

2. A second key issue will be one of structural equivalence: Does the HLS protocol—which uses a separate playlist file to orchestrate multiple standard HTTP GET requests for video segments—constitute the ’828 Patent's claimed "extended HTTP chunked transfer encoding mode," which describes a specific, two-part data structure within a single HTTP response? The court will need to determine if there is a fundamental mismatch between the claimed method and the accused HLS technology.