DCT
1:23-cv-08971
DISH Tech LLC v. Britbox LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: DISH Technologies L.L.C. and Sling TV L.L.C. (Colorado)
- Defendant: BritBox, LLC (New York)
- Plaintiff’s Counsel: Baker Botts L.L.P.
- Case Identification: 1:23-cv-08971, S.D.N.Y., 10/12/2023
- Venue Allegations: Venue is alleged to be proper as Defendant BritBox is incorporated in New York.
- Core Dispute: Plaintiff alleges that Defendant’s online streaming service infringes eight patents related to adaptive bitrate (ABR) streaming technology.
- Technical Context: Adaptive bitrate streaming is a foundational technology for modern internet video delivery, enabling services to dynamically adjust video quality based on a user's network conditions to prevent buffering.
- Key Procedural History: The complaint alleges an extensive history of pre-suit notice, beginning with a November 2018 letter to Defendant’s parent companies (BBC and ITV) identifying the ABR patent portfolio. Subsequent communications, including emails to BritBox's President and General Counsel in 2019 and 2020 which included infringement claim charts for certain patents, are alleged to have gone unanswered, forming the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2003-01-01 | Predecessor-in-interest Move Networks, Inc. is founded. |
| 2004-04-30 | Earliest Priority Date for all Asserted Patents. |
| 2010-12-01 | EchoStar acquires the ABR Patent portfolio from Move. |
| 2014-10-21 | U.S. Patent No. 8,868,772 issues. |
| 2015-01-01 | Sling TV streaming service launches. |
| 2016-08-02 | U.S. Patent No. 9,407,564 issues. |
| 2018-11-09 | DISH sends letter to BBC and ITV regarding patent portfolio. |
| 2019-07-18 | DISH sends email to BritBox regarding patent portfolio. |
| 2019-11-05 | U.S. Patent No. 10,469,554 issues. |
| 2019-11-05 | U.S. Patent No. 10,469,555 issues. |
| 2020-08-25 | U.S. Patent No. 10,757,156 issues. |
| 2020-09-15 | DISH sends claim charts for the ’564 Patent to BritBox. |
| 2021-03-16 | U.S. Patent No. 10,951,680 issues. |
| 2022-10-11 | U.S. Patent No. 11,470,138 issues. |
| 2023-06-13 | U.S. Patent No. 11,677,798 issues. |
| 2023-10-12 | Complaint is filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,469,554 - Apparatus, system, and method for multi-bitrate content streaming
The Invention Explained
- Problem Addressed: Prior to the invention, internet video delivery was unreliable. Users had to choose between slow, full-file downloads or low-quality, buffer-prone streaming that often failed to adapt to fluctuating network conditions (Compl. ¶¶18-20; ’554 Patent, col. 1:40-57). Existing streaming technologies were also expensive and complex to deploy, often requiring custom server architectures (Compl. ¶19).
- The Patented Solution: The invention segments a video file into smaller pieces, or "streamlets," and encodes multiple versions of each streamlet at different quality levels (bitrates). An "intelligent client" device monitors the user's network throughput and requests the next streamlet at the highest quality the network can sustain. This client-side, adaptive "pull" approach, using standard web protocols like HTTP, allows for seamless quality shifts to avoid buffering and simplifies the server infrastructure (Compl. ¶¶21, 24; ’554 Patent, Abstract; col. 3:9-15).
- Technical Importance: This client-driven, segmented architecture using standard internet protocols represented a significant improvement in user experience and a reduction in operating costs compared to server-driven, proprietary streaming systems (Compl. ¶24).
Key Claims at a Glance
- The complaint asserts independent claim 16 (Compl. ¶45).
- The essential elements of claim 16 are:
- An end user station with a processor and memory.
- Instructions causing the processor to establish a network connection to a server having access to groups of "streamlets."
- The streamlets are derived from a "live event video" encoded into at least low, medium, and high quality streams.
- At least one stream is encoded at a bitrate of no less than 600 kbps.
- The first streamlets of each quality level have equal playback duration and encode the same portion of the video.
- The end user station selects a specific quality stream based on its own determination.
- The end user station then requests, receives, and provides for playback the first streamlet of the selected stream.
- The complaint reserves the right to assert additional claims as the case progresses (Compl. p. 14, n.1).
U.S. Patent No. 11,677,798 - Apparatus, system, and method for multi-bitrate content streaming
The Invention Explained
- Problem Addressed: The patent, which shares a specification with the ’554 Patent, addresses the problems of reliability, efficiency, and latency in then-current internet streaming systems, which sacrificed quality for immediate access and were prone to buffering (Compl. ¶¶18-20; ’798 Patent, col. 1:45-57).
- The Patented Solution: The invention describes a client-side adaptive bitrate streaming system. A client device determines whether to select a higher or lower bitrate version of a stream based on network conditions and requests corresponding media segments ("streamlets") from a server, allowing for smooth playback at the best possible quality (Compl. ¶¶21, 24; ’798 Patent, Abstract).
- Technical Importance: This approach improves user experience by minimizing buffering and improves scalability and cost-efficiency by using standard HTTP servers instead of specialized streaming servers (Compl. ¶24).
Key Claims at a Glance
- The complaint asserts independent claim 11 (Compl. ¶70).
- The essential elements of claim 11 are:
- An end user station with a processor and memory.
- Instructions causing the processor to establish a network connection to a server with access to groups of streamlets of "digital content."
- The digital content is encoded into at least a first, second, and third bit rate stream.
- At least one stream is encoded at a bitrate of no less than 600 kbps.
- The first streamlets of each bit rate stream have equal playback duration and encode the same portion of the digital content.
- The processor determines whether to select a higher or lower bit rate copy of the stream and selects a specific stream.
- The processor then places a request for, receives, and provides for output the first streamlet of the selected stream.
- The complaint reserves the right to assert additional claims as the case progresses (Compl. p. 14, n.1).
U.S. Patent No. 9,407,564 - Apparatus, system, and method for adaptive-rate shifting of streaming content
- Technology Synopsis: The patent describes a method for presenting rate-adaptive streams where a media player on an end user station makes successive determinations to shift playback quality. The player generates a factor indicative of network performance and uses it to request files from different quality copies of a video to achieve continuous playback (Compl. ¶95).
- Asserted Claims: Independent method claim 8 (Compl. ¶95).
- Accused Features: The "Accused Streaming Services" are alleged to infringe by receiving video segments and adapting requests for subsequent segments based on network connection quality (Compl. p. 24).
U.S. Patent No. 10,951,680 - Apparatus, system, and method for multi-bitrate content streaming
- Technology Synopsis: The patent claims an end user station that selects a specific quality stream based on a determination to use a higher or lower bitrate. A distinguishing feature of the asserted claim is the placing of "at least one virtual timeline request for at least one virtual times" and receiving the "virtual timeline" (Compl. ¶120).
- Asserted Claims: Independent apparatus claim 14 (Compl. ¶120).
- Accused Features: The "Accused Streaming Services" are alleged to infringe by receiving video segments and adapting requests based on network connection quality (Compl. p. 29).
U.S. Patent No. 10,469,555 - Apparatus, system, and method for multi-bitrate content streaming
- Technology Synopsis: The patent claims a content player device that selects a specific stream from low, medium, and high quality options based on a client-side determination. The asserted claim requires that the streamlet from the low quality stream has an equal playback duration as the corresponding streamlet in the high quality streams (Compl. ¶144).
- Asserted Claims: Independent apparatus claim 10 (Compl. ¶144).
- Accused Features: The "Accused Streaming Services" are alleged to infringe by receiving video segments and adapting requests based on network connection quality (Compl. p. 34).
U.S. Patent No. 8,868,772 - Apparatus, system, and method for multi-bitrate content streaming
- Technology Synopsis: The patent describes a method where a media player streams video by requesting sequential files based on time indexes. The player repeatedly generates factors indicative of network performance to make successive determinations to shift playback quality to achieve continuous playback (Compl. ¶169).
- Asserted Claims: Independent method claim 1 (Compl. ¶169).
- Accused Features: The "Accused Streaming Services" are alleged to infringe by receiving video segments and adapting requests based on network connection quality (Compl. p. 39).
U.S. Patent No. 11,470,138 - Apparatus, system, and method for multi-bitrate content streaming
- Technology Synopsis: The patent claims an end user station that establishes an internet connection to a server to stream video. The station's client-side logic selects a stream from low, medium, and high quality options based on its own determination and places a request for the corresponding streamlet (Compl. ¶194).
- Asserted Claims: Independent apparatus claim 14 (Compl. ¶194).
- Accused Features: The "Accused Streaming Services" are alleged to infringe by receiving video segments and adapting requests based on network connection quality (Compl. p. 44).
U.S. Patent No. 10,757,156 - Apparatus, system, and method for adaptive-rate shifting of streaming content
- Technology Synopsis: The patent claims an apparatus with a media player that requests sequential streamlets by transmitting HTTP GET requests. The player repeatedly generates a factor relating to network performance and adapts its successive determinations to shift playback quality to achieve continuous playback (Compl. ¶219).
- Asserted Claims: Independent apparatus claim 1 (Compl. ¶219).
- Accused Features: The "Accused Streaming Services" are alleged to infringe by receiving video segments and adapting requests based on network connection quality (Compl. p. 49).
III. The Accused Instrumentality
Product Identification
- The BritBox Application, BritBox Site, and BritBox Server(s), collectively referred to as the "Accused Streaming Services" (Compl. ¶32).
Functionality and Market Context
- The Accused Streaming Services constitute an online, on-demand video subscription service (Compl. ¶¶4, 32). The complaint alleges that the service operates by receiving segments of a selected video program for playback over a network connection. It is further alleged that the services "adapt requests for segments from a set of segments with the same content but varying quality based upon the quality of the network connection" (Compl. p. 14). This functionality is central to the infringement allegations for all asserted patents.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
10,469,554 Patent Infringement Allegations
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An end user station to stream a live event video over a network from a server for playback of the video, the content player device comprising: a processor; a digital processing apparatus memory device comprising non-transitory machine-readable instructions... | The BritBox application operates on end-user devices (e.g., mobile phones, streaming devices) which contain processors and memory. | ¶45, p. 14 | col. 6:10-23 |
| establish one or more network connections between the end user station and the server... | The BritBox application establishes a connection over the internet with BritBox's servers to request and receive video data. | p. 14 | col. 6:50-54 |
| wherein the live event video is encoded at a plurality of different bitrates to create a plurality of streams including at least a low quality stream, a medium quality stream, and a high quality stream... | The BritBox service allegedly encodes video content into multiple streams of varying quality to adapt to network conditions. | p. 14 | col. 7:15-35 |
| select a specific one of the low quality stream, the medium quality stream, and the high quality stream based upon a determination by the end user station to select a higher or lower bitrate version of the streams | The BritBox application allegedly contains client-side logic that determines which quality level to request based on the user's network connection. | p. 14 | col. 13:5-24 |
| place a streamlet request to the server... receive the requested first streamlet... and provide the received first streamlet for playback of the live event video. | The BritBox application requests a specific segment (streamlet) of video, receives it from the server, and plays it for the user. | p. 14 | col. 13:25-30 |
11,677,798 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An end user station comprising: a processor; a digital processing apparatus memory device comprising non-transitory machine-readable instructions... | The BritBox application operates on end-user devices that contain processors and memory to execute the application's instructions. | ¶70, p. 19 | col. 6:10-23 |
| establish one or more network connections between the end user station and at least one server... | The BritBox application connects to BritBox servers over a network to stream content. | p. 19 | col. 6:50-54 |
| wherein the digital content is encoded at a plurality of different bit rates to create a plurality of streams including at least a first bit rate stream, a second bit rate stream, and a third bit rate stream... | BritBox is alleged to encode its digital video content into at least three different quality streams to facilitate adaptive streaming. | p. 19 | col. 7:15-25 |
| determine whether to select a higher or lower bit rate copy of the stream and based on that determination, select a specific one of the first bit rate stream, the second bit rate stream, and the third bit rate stream | The BritBox application allegedly measures network performance and determines which quality version of the next video segment to request from the server. | p. 19 | col. 17:5-20 |
| place a first streamlet request... receive the requested first streamlet... and provide the received first streamlet for output of the digital content to a presentation device. | The BritBox application requests, receives, and plays the selected video segment for the user. | p. 19 | col. 13:25-34 |
Identified Points of Contention
- Scope Questions: A central question for the ’554 Patent may be the scope of the term "live event video." The complaint alleges BritBox is a distributor of "on-demand content" (Compl. ¶32), raising the question of whether this term, as used in claim 16, can be construed to cover pre-recorded, on-demand content, or if it is limited to content streamed contemporaneously with an event's occurrence.
- Technical Questions: The infringement allegations for all patents will depend on evidence of how the BritBox service technically operates. Questions for the court may include: Does the service encode content into at least three distinct bitrate streams as required by several claims? Does the client application, rather than the server, make the determination of which quality level to request? What evidence shows that the service meets specific numerical limitations, such as the "no less than 600 kbps" bitrate requirement present in many asserted claims?
V. Key Claim Terms for Construction
The Term: "live event video" (’554 Patent, claim 16)
Context and Importance: The construction of this term may be dispositive for infringement of the ’554 Patent, as the accused service is described as "on-demand" (Compl. ¶32). Practitioners may focus on this term because its interpretation will determine whether the claim can read on the accused service's core functionality.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification distinguishes between delivering content "on demand (previously recorded)" and from "live broadcasts," suggesting the inventors contemplated both types of streaming (Compl. ¶18; ’554 Patent, col. 1:54-55). This could support an argument that the invention is applicable to both, and the claim term should not be narrowly confined.
- Evidence for a Narrower Interpretation: The plain meaning of "live event" suggests a contemporaneous broadcast. A defendant may argue that its inclusion in claim 16, while absent from claims in other family members (e.g., "digital content" in ’798 Patent, claim 11), represents a deliberate limitation on the scope of this specific claim.
The Term: "streamlet" (’554 and ’798 Patents, and others)
Context and Importance: This term defines the fundamental unit of segmented content in the patented invention. Its construction is critical because infringement requires the accused service to operate using these claimed "streamlets."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a broad definition, stating a streamlet refers to "any sized portion of the content file 200" and is "encapsulated as an independent media object" (’554 Patent, col. 7:39-42). This could support a construction that covers any segment of a media file used in ABR streaming.
- Evidence for a Narrower Interpretation: The specification also describes streamlets as having a "unique time index in relation to the beginning of the content" and a specific duration, such as two seconds (’554 Patent, col. 7:42-48). A party might argue these properties are required elements, potentially narrowing the term to exclude systems that segment content differently.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b). The allegations are based on BritBox providing instructions and encouragement to end-users on how to install and subscribe to the allegedly infringing streaming service via articles on its website (Compl. ¶¶52, 54, 77, 79).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the patents. The complaint details a multi-year history of communications, starting in November 2018, in which DISH allegedly informed BritBox and its parent companies of the patent portfolio and its alleged infringement, including the provision of infringement claim charts for at least the ’564 patent (Compl. ¶¶34-43). BritBox's alleged continued infringement despite these notices is the basis for the willfulness claim (Compl. ¶1).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "live event video," as recited in claim 16 of the ’554 patent, be construed to cover the on-demand content that constitutes the accused BritBox service, or is the claim limited to contemporaneous streaming?
- A key evidentiary question will be one of technical proof: what evidence will be presented to demonstrate that the Accused Streaming Services practice the specific, client-side decision-making logic and meet the numerical bitrate and stream-count limitations recited in the asserted claims?
- A central question for damages will be willfulness: given the extensive pre-suit correspondence alleged in the complaint, including the provision of claim charts, the court will need to determine whether Defendant's alleged conduct rose to the level of egregious behavior sufficient to warrant enhanced damages.