DCT
2:17-cv-00031
OpenTV Inc v. NFL Enterprises LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: OpenTV, Inc. (Delaware)
- Defendant: NFL Enterprisess, LLC (Delaware)
- Plaintiff’s Counsel: Feinberg Day Alberti & Thompson LLP
- Case Identification: 2:17-cv-00031, E.D. Tex., 01/12/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has transacted business and committed acts of direct and indirect infringement in the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s online video services and applications infringe seven patents related to interactive digital television technologies, including secure user authentication, data insertion into video streams, and synchronization of interactive content.
- Technical Context: The technologies at issue relate to the architecture for delivering and enhancing digital video content, a commercially significant field for media companies, broadcasters, and streaming service providers.
- Key Procedural History: The complaint alleges that Defendant had pre-suit notice of six of the seven asserted patents via a letter dated November 30, 2015, which may form the basis for allegations of willful infringement. One patent-in-suit, U.S. Patent No. 6,233,736, expired on February 8, 2016, limiting any potential damages for its infringement to the period before that date.
Case Timeline
| Date | Event |
|---|---|
| 1996-02-08 | ’736 Patent Priority Date |
| 1999-06-04 | ’861 Patent Priority Date |
| 2000-02-02 | ’327 Patent Priority Date |
| 2000-08-25 | ’729 Patent Priority Date |
| 2000-11-27 | ’888 Patent Priority Date |
| 2001-05-15 | ’736 Patent Issued |
| 2001-10-10 | ’033 Patent Priority Date |
| 2002-04-19 | ’169 Patent Priority Date |
| 2002-01-01 | NFLE Formed (approximate date) |
| 2006-03-28 | ’888 Patent Issued |
| 2006-04-11 | ’327 Patent Issued |
| 2006-05-30 | ’169 Patent Issued |
| 2008-09-02 | ’729 Patent Issued |
| 2011-05-24 | ’033 Patent Issued |
| 2011-08-09 | ’861 Patent Issued |
| 2015-11-30 | Pre-suit notice letter sent by Plaintiff |
| 2016-02-08 | ’736 Patent Expired |
| 2017-01-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,996,861 - "Flexible Interface for Secure Input of Pin Code," issued August 9, 2011
The Invention Explained
- Problem Addressed: The patent addresses the technical problem of how to authenticate a user's right to access protected content, such as a pay-per-view program, without compromising the secrecy of the user's PIN code to the application requesting access (Compl. ¶24).
- The Patented Solution: The invention describes a system where an application seeking to grant access to content requests user authentication, but the user's PIN is supplied directly to a separate, trusted "security manager" rather than to the application itself. This security manager verifies the PIN and confirms authorization to the application without ever disclosing the actual PIN, thus preserving its confidentiality for future use (’861 Patent, Abstract; Compl. ¶24).
- Technical Importance: This architectural separation of duties is a foundational computer security principle that prevents potentially untrusted or vulnerable applications from capturing, storing, or mishandling sensitive user credentials.
Key Claims at a Glance
- The complaint asserts independent claim 9 (Compl. ¶25).
- Essential elements of claim 9, a non-transitory computer readable storage medium claim, include program instructions for:
- receiving a request for user authentication from an application;
- supplying information to the application about PIN code entering key-pressing operations, wherein the entered PIN code is not supplied to the application;
- comparing an entered PIN code with a registered PIN code;
- giving authorization to run the application if the PIN code matches;
- where the application is configured to present crypted (e.g., obfuscated) information corresponding to the key-pressing operations.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,421,729 - "Generation and Insertion of Indicators Using An Address Signal Applied To A Database," issued September 2, 2008
The Invention Explained
- Problem Addressed: The patent addresses the problem of how to insert additional, time-sensitive information into a video stream such that the information is relevant to the content being displayed at that moment (Compl. ¶44).
- The Patented Solution: The invention discloses a system that generates a time code signal synchronized with a video stream. This time code is used by an "address generator" to create an address signal that accesses a database of "indicators," such as tags and markers. These indicators, which can mark video segments or link to interactive content, are then encoded into the video stream for delivery to a viewer's device (’729 Patent, Abstract, col. 3:55-67).
- Technical Importance: This technology provides a technical framework for enabling interactive television by creating a machine-readable link between linear video programming and related, dynamic data sources.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶45).
- Essential elements of claim 1, a method claim, include:
- generating a time code signal synchronized with a video stream;
- applying the time code signal to an address generator to produce a corresponding address signal;
- applying the address signal to a database storing a plurality of indicators;
- accessing a set of indicators from the database using the address signal; and
- encoding the video stream with the accessed set of indicators.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,028,327 - "Using The Electronic Program Guide To Synchronize Interactivity With Broadcast Programs," issued April 11, 2006
- Technology Synopsis: This patent describes a system to synchronize an interactive software application with a video program. It uses timing offset information, determined with an electronic program guide (EPG), to control the interactive application, including determining breaks in program content and suspending and resuming the application to maintain synchrony with the video display (Compl. ¶64).
- Asserted Claims: Independent claim 13 is asserted (Compl. ¶65).
- Accused Features: The "NFL Now" service, which allegedly uses an electronic program guide and timing offset markers (e.g., "duration" markers) to suspend interactive controls during dynamic ad insertion and resume them after the ad break (Compl. ¶¶65.A-G).
U.S. Patent No. 7,950,033 - "Utilization of Relational Metadata In A Television System," issued May 24, 2011
- Technology Synopsis: This patent discloses a system that uses "relational metadata" to define a relationship between a first dataset (e.g., a video stream) and a second dataset (e.g., additional information). Based on this defined relationship, the system initiates an action, such as presenting more detailed content like a summary or highlight in a separately displayed window (Compl. ¶84).
- Asserted Claims: Independent claim 27 is asserted (Compl. ¶85).
- Accused Features: The "NFL Mobile" and "NFL Game Pass" applications, which allegedly parse relational metadata to provide a "highlight" relationship between a video stream and play-by-play data, triggering the display of a play summary in a pop-up window when a user selects a "Big Play Marker" (Compl. ¶¶85.A-D).
U.S. Patent No. 7,055,169 - "Supporting Common Interactive Television Functionality Through Presentation Engine Syntax," issued May 30, 2006
- Technology Synopsis: The technology addresses the problem of a digital presentation initiating without the necessary computer-implemented resources being present. The patented system determines if a presentation requires additional resources and, if so, prohibits its initiation until those resources are available, thereby preventing improper display (Compl. ¶104).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶105).
- Accused Features: The adaptive bitrate streaming functionality in "NFL Game Pass" and "NFL Mobile." These services allegedly use a manifest file containing "prerequisite directives" (e.g., a required bitrate) to determine if a user's device has sufficient CPU and bandwidth resources before permitting a high-definition stream to be initiated (Compl. ¶¶105.A-D).
U.S. Patent No. 7,020,888 - "System And Method For Providing An Omnimedia Package," issued March 28, 2006
- Technology Synopsis: The invention relates to combining various streams of audio, video, and metadata content into a single broadcast stream, referred to as an "omnimedia package." A "framework definition" is created to identify the various stream types and their attributes, allowing a receiving device to decode, combine, and display the disparate content streams (Compl. ¶124).
- Asserted Claims: Independent claim 1 is asserted (Compl. ¶125).
- Accused Features: The "NFL Game Pass" application and its associated content delivery infrastructure. This system allegedly generates "omnimedia content" by capturing game video and audio, combining it with metadata such as text features and "Big Play Markers," and transcoding these elements into a single broadcast stream for delivery to end-users (Compl. ¶¶125.A-G).
U.S. Patent No. 6,233,736 - "Media Online Service Access System and Method," issued May 15, 2001
- Technology Synopsis: The patent describes a method for allowing a user viewing video content to directly access associated online information. The system accomplishes this by providing a link within the video program itself. An address for an online provider is embedded in the electronic video signal, which a receiving device extracts and uses to automatically establish a connection to the online information upon a user's command (Compl. ¶143).
- Asserted Claims: Independent claim 8 is asserted (Compl. ¶144).
- Accused Features: Online streaming services on NFL.com, NFL Now, and other applications that render video advertising content (compliant with VAST or VPAID standards) containing clickable links that give users direct access to additional online information associated with the advertiser (Compl. ¶¶144.A-C).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are a suite of online video services and applications including, but not limited to, NFL.com, Watch NFL Network/NFL Redzone, NFL Now, NFL Game Pass, NFL Mobile, the NFL App, and NFL Fantasy Football (collectively, the "Accused Instrumentalities") (Compl. ¶19).
Functionality and Market Context
- The Accused Instrumentalities provide streaming interactive video content to users across numerous platforms, including mobile phones, tablets, personal computers, and streaming media devices (Compl. ¶19). The complaint targets specific functionalities within these services. For example, the "Watch NFL Network Application" is accused of infringing the ’861 Patent through its use of a third-party TV Everywhere authentication service that requests user credentials (Compl. ¶25.B). A screenshot of an exemplary MVPD login iFrame shows the interface for this authentication (Compl. p. 9). The "NFL Game Pass" application is accused of infringing the ’729 Patent by providing a "Big Play Markers" feature that synchronizes play highlights with the game's video stream using time codes and a metadata database (Compl. ¶45.A).
IV. Analysis of Infringement Allegations
’861 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| program instructions for receiving a request for user authentication from an application | When a user attempts to access the Watch NFL Network Application, the application presents a request for user authentication. | ¶25.B | col. 8:3-4 |
| program instructions for supplying information to the application about PIN code entering key-pressing operations by the user, wherein the entered PIN code is not supplied to the application | Key-press information is allegedly supplied to the application for display in an obfuscated form, while an "authentication service manager" ensures the actual PIN is not supplied to the application. | ¶25.C | col. 8:16-20 |
| program instructions for comparing an entered PIN code of the user with a registered PIN code | The system determines if the user's entered PIN code matches the registered PIN code. | ¶25.D | col. 8:5-7 |
| program instructions for giving authorization to run said application if the PIN code of the user matches the registered PIN code | Once a match is confirmed, authorization is given to run the application, granting access to the service. | ¶25.D | col. 8:8-10 |
| wherein the application is configured to present in the PIN entry field crypted information corresponding to the information about PIN code entering key-pressing operations received from the security manager | The complaint alleges and provides a screenshot showing that the user's PIN entry is displayed in an encrypted or obfuscated form. | ¶25.C | col. 8:11-15 |
’729 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| generating a time code signal that is synchronized with the video stream | The accused services allegedly generate time code signals to synchronize play highlights with the video content of an NFL game. | ¶45.A | col. 3:55-57 |
| applying the time code signal to an address generator that decodes the time code signal and generates a corresponding address signal | The time code signals are allegedly decoded and used to generate corresponding address signals that index a database. | ¶45.B | col. 3:57-60 |
| applying said address signal to a database storing a plurality of indicators | The address signals are allegedly applied to a database that stores metadata for play highlights correlated to "Big Play" indicators. | ¶45.B | col. 3:60-62 |
| accessing a set of indicators that are stored in said database using said address signal as an address into said database | A set of indicators for "play highlights" or "Big Play" features is accessed from the database using the address signals. | ¶45.C | col. 3:63-65 |
| encoding said video stream with said set of indicators accessed from said database using said address signal | The accessed indicators are allegedly encoded in the video stream, for example as XML-encoded data indicating the availability of a play highlight. A screenshot shows XML source code for the Big Play metadata (Compl. p. 16). | ¶45.C | col. 3:65-67 |
- Identified Points of Contention:
- ’861 Patent Scope Question: The complaint provides a screenshot of a DIRECTV login screen (Compl. p. 8), which raises the question of whether the claimed steps of "comparing" the PIN and "giving authorization" are performed by Defendant’s system or by a third-party multichannel video programming distributor (MVPD). The analysis may turn on whether Defendant's system, by incorporating this third-party functionality, is considered to practice all steps of the claim.
- ’729 Patent Technical Question: The complaint alleges the video stream is "encoded" with indicators, providing an "Exemplary source for the Big Play metadata" in XML format as evidence (Compl. p. 16). A key technical question will be whether providing this XML metadata in conjunction with a video stream meets the claim limitation of "encoding said video stream with said set of indicators," or if that term requires the data to be multiplexed directly into the video bitstream itself.
V. Key Claim Terms for Construction
Term (’861 Patent, Claim 9): "supplying information to the application about PIN code entering key-pressing operations"
- Context and Importance: The infringement theory requires that the accused application receive some information about the PIN entry (to display obfuscated characters) while not receiving the PIN itself. Practitioners may focus on this term because Defendant could argue that its application receives no information, with the entire authentication process occurring within a self-contained, third-party iFrame.
- Evidence for a Broader Interpretation: The claim language is not specific about the nature or mechanism of the "information" supplied. This could support a reading that covers any data transfer, however indirect, that allows the application to react to a key press, such as a JavaScript event from an embedded frame.
- Evidence for a Narrower Interpretation: The patent’s description of a "security manager" architecture that communicates with the application (’861 Patent, Abstract) may suggest a more direct, structured data exchange is required, rather than the indirect effects of displaying a third-party web element.
Term (’729 Patent, Claim 1): "encoding said video stream with said set of indicators"
- Context and Importance: This term is critical because the complaint’s evidence points to XML metadata provided alongside a video stream (Compl. p. 16). The viability of the infringement claim may depend on whether "encoding... with" can be construed to cover this architecture.
- Evidence for a Broader Interpretation: The patent’s overall purpose is to link video content with related data to enable interactivity (’729 Patent, Abstract). This purpose may support a functional interpretation where any method of delivering synchronized, associated data alongside video constitutes "encoding... with."
- Evidence for a Narrower Interpretation: The patent specification refers to inserting tags and markers "in a video signal" (’729 Patent, col. 2:10-12) and generating a "video encoded with tags and markers" (e.g., ’729 Patent, Fig. 3, element 322). This language may support a narrower construction requiring the indicator data to be embedded within the same transport stream as the video data.
VI. Other Allegations
- Indirect Infringement: For all asserted patents, the complaint alleges induced infringement, stating that Defendant advertises and promotes the accused features on its websites and encourages users to configure and operate their devices in an infringing manner (e.g., Compl. ¶¶31, 51, 111, 150). Contributory infringement is also alleged, on the basis that the accused functionalities are specially made and adapted for infringement and lack substantial non-infringing uses (e.g., Compl. ¶¶34-37, 54-57).
- Willful Infringement: Willfulness is alleged for all patents except the ’888 Patent based on alleged pre-suit knowledge stemming from a letter dated November 30, 2015 (Compl. ¶2). For the ’888 Patent, willfulness is alleged from the filing date of the complaint (Compl. ¶2). The complaint asserts that Defendant, being aware of its infringement, "opted to make the business decision to 'efficiently infringe'" the patents rather than take a license (Compl. ¶38).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue across multiple patents will be one of architectural liability: to what degree does Defendant’s system perform the claimed functions itself versus relying on integrated third-party components (such as an MVPD’s authentication service or a content delivery network’s transcoding platform)? The outcome may depend on whether Defendant is found to "make," "use," or "sell" a system that practices every claim limitation, even if some steps are executed by external services under its direction or control.
- The case will also likely turn on a question of definitional scope in the context of evolving technology: can claim terms drafted for earlier digital television architectures be construed to cover modern, web-based data delivery methods? For instance, does providing a synchronized but separate XML metadata file constitute "encoding said video stream with... indicators" (’729 Patent), a term that may have been understood at the time of invention to mean multiplexing data into a single transport stream?