DCT
2:18-cv-00497
Uniloc 2017 LLC v. Google LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware) and Uniloc USA, Inc. (Texas)
- Defendant: Google LLC (Delaware)
- Plaintiff’s Counsel: Etheridge Law Group, PLLC
- Case Identification: 2:18-cv-00497, E.D. Tex., 11/17/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas based on Defendant’s purported regular and established places of business, including Google Global Cache (GGC) servers hosted by ISPs in Sherman, Tyler, and Texarkana; Google Fi cellular service infrastructure; and equipment at Megaport facilities in Denton County.
- Core Dispute: Plaintiff alleges that Defendant’s YouTube and Google Cloud video streaming services infringe a patent related to an efficient method for modifying digitally coded data, such as video files.
- Technical Context: The lawsuit concerns the field of digital video processing, specifically techniques for implementing features like adaptive bitrate streaming, where video quality adjusts dynamically to network conditions.
- Key Procedural History: Subsequent to the filing of this complaint, U.S. Patent No. 6,329,934 was the subject of an Inter Partes Review (IPR), IPR2020-00447, filed by Google LLC. The proceeding resulted in the cancellation of Claim 1, the independent claim centrally asserted in this litigation.
Case Timeline
| Date | Event |
|---|---|
| 1998-03-31 | ’934 Patent Priority Date |
| 2001-12-11 | ’934 Patent Issue Date |
| 2015-01-01 | YouTube switches to HTML5/MPEG-DASH delivery (approx.) |
| 2018-11-17 | Complaint Filing Date |
| 2020-01-17 | IPR filed against ’934 Patent by Google LLC |
| 2021-10-13 | U.S. Patent Office issues certificate cancelling Claim 1 of the ’934 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,329,934 - “MODIFYING DATA WHICH HAS BEEN CODED,” issued December 11, 2001
The Invention Explained
- Problem Addressed: The patent describes the process of modifying already-coded data (like an MPEG video file) by fully decoding it, making changes, and then fully re-coding it as being computationally expensive and potentially introducing new distortions, particularly from repeated motion estimation steps (’934 Patent, col. 1:25-40).
- The Patented Solution: The invention proposes a more efficient method where the coded data is only "partially decoded" into an intermediate state (e.g., prediction-error pixels), modified in that state, and then re-coded using a "complementary" coding process that reverses the partial decoding. This avoids the cost and complexity of a full decode/re-code cycle by reusing information like motion vectors (’934 Patent, Abstract; Fig. 1; col. 1:41-60).
- Technical Importance: This approach was intended to provide a cost-efficient way to perform video editing and processing tasks on compressed video streams without requiring the full computational resources of a complete decoding and encoding sequence (’934 Patent, col. 1:56-60).
Key Claims at a Glance
- The complaint asserts independent claim 1, both literally and under the doctrine of equivalents (Compl. ¶91, 92).
- Claim 1 of the ’934 Patent recites a method with the following essential elements:
- A method of modifying coded data, comprising the steps of:
- partially decoding the coded data to obtain blocks of prediction-error pixels;
- modifying the blocks of prediction-error pixels to obtain modified partially decoded data; and
- complementary coding the modified partially decoded data to obtain coded modified data.
- The complaint reserves the right to pursue other claims (Compl. ¶96).
III. The Accused Instrumentality
Product Identification
The complaint identifies "YouTube and Google Cloud (Media & Entertainment Solutions)" as the "Accused Infringing Devices" (Compl. ¶83).
Functionality and Market Context
The complaint alleges that these Google systems support live streaming and video-on-demand using adaptive bitrate (ABR) technology and the H.264 video codec (Compl. ¶83, 84). The complaint alleges that H.264 uses special "SP frames" to enable switching between video streams of different bitrates and that the generation of these frames involves encoding "partially decoded data" (Compl. ¶83, 86). The complaint provides a screenshot of Google Cloud marketing material describing its ability to encode video into multiple formats, including H.264, to ensure content reaches audiences regardless of bandwidth constraints (Compl. p. 32). It also includes an image from a YouTube help page showing H.264 as a recommended video codec for uploads (Compl. p. 31).
IV. Analysis of Infringement Allegations
’934 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| partially decoding (PDEC) the coded data (CD) so as to obtain blocks of prediction-error pixels | The complaint alleges that in the process of generating SP frames, coded data ("lpred") is partially decoded via inverse quantization to generate "dpred", which contains information related to reference frame coefficients (Compl. ¶88). | ¶88 | col. 11:15-17 |
| modifying (MOD) the blocks of prediction-error pixels so as to obtain modified partially decoded data (MPDD) | The complaint alleges that the partially decoded reference frame coefficients ("dpred") are modified by being subtracted from original frame coefficients ("corig") to generate prediction error coefficients ("cerr") (Compl. ¶89). | ¶89 | col. 11:18-20 |
| complementary coding (CCOD) the modified partially decoded data (MPDD), so as to obtain coded modified data (CMD) | The complaint alleges that the resulting prediction error coefficients ("cerr") are then encoded by a quantization block to generate "lerr", which is described as the final encoded data obtained from the modification of "dpred" (Compl. ¶90). | ¶90 | col. 11:21-24 |
Identified Points of Contention
- Technical Questions: A central question is whether Google’s implementation of H.264 SP-frames for adaptive bitrate streaming operates in the manner described by the complaint (Compl. ¶¶87-90). The analysis would require determining if Google’s process accurately maps onto the patent’s specific sequence of partial decoding, modification of prediction-error pixels, and complementary re-coding. The complaint supports its venue allegations with photographs of a Google Global Cache server facility in Tyler, Texas, including its exterior, interior racks, and the servers themselves, to establish a physical presence in the district (Compl. p. 9).
- Scope Questions: The definition of "modifying" the prediction-error pixels may be a point of dispute. The patent specification contemplates operations such as adding, scaling, or filtering pixels (’934 Patent, col. 2:3-6), while the complaint alleges a specific subtraction operation to generate new error coefficients (Compl. ¶89). The court would need to determine if the alleged activity falls within the scope of the claim term as construed in light of the specification.
V. Key Claim Terms for Construction
The Term: "partially decoding"
- Context and Importance: This term is foundational to the patent's asserted novelty of being more efficient than a full decode/re-code cycle. The scope of this term dictates how incomplete a decoding process must be to qualify. Infringement hinges on the accused process meeting this "partial" definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes this as carrying out "only a first few decoding steps... with K being smaller than N," where N is the total number of steps for a full decode (’934 Patent, col. 3:1-5). This language could support an interpretation where omitting any single required decoding step renders the process "partial."
- Evidence for a Narrower Interpretation: The background section provides a specific example where partial decoding "may comprise variable length decoding, inverse quantization and inverse discrete cosine transformation, but not motion compensation" (’934 Patent, col. 1:62-67). A party could argue that "partially decoding" requires, at a minimum, the specific omission of the motion compensation step.
The Term: "complementary coding"
- Context and Importance: This term defines the nature of the re-coding step. It is not just any encoding process, but one that is a "complement" to the partial decoding. The relationship between the decoding and coding steps is critical to defining the claimed method.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes this step as one which is a "complement C of a specific decoding step Sd which has been carried out by the partial decoder" (’934 Patent, col. 3:9-12). This could be read to mean a general reversal of the partial decoding, without requiring a strict one-to-one mapping of functions.
- Evidence for a Narrower Interpretation: Figure 1 depicts a direct correspondence between the complementary coding steps (Sc) and the partial decoding steps (Sd). A party could argue this requires a direct, inverse functional relationship for each corresponding step, a condition which may not be met by a standard video encoder.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement, stating that Google instructs its customers on how to use the accused services via "training videos, demonstrations, brochures, installation and/or user guides" available on its websites (Compl. ¶93). It further alleges contributory infringement, claiming Google provides a material component of the patented invention that is not a staple article of commerce (Compl. ¶94).
Willful Infringement
The complaint makes a claim for willful infringement based on post-suit conduct, alleging that Google will have notice of the ’934 Patent upon service of the complaint and that any continued infringement thereafter would be willful (Compl. ¶95).
VII. Analyst’s Conclusion: Key Questions for the Case
- The foremost issue in this case is one of claim viability: Given that the asserted independent Claim 1 of the ’934 Patent was cancelled in IPR proceedings that concluded after this complaint was filed, the primary question is what, if any, legal basis remains for Plaintiff's cause of action, which is predicated entirely on this now-cancelled claim.
- A secondary question, assuming the claim were still valid, would be one of technical mapping: Does the complaint’s narrative describing Google’s H.264 SP-frame generation (Compl. ¶¶ 87-90) accurately reflect the technical reality of the accused systems? A court would need to determine if this process constitutes the specific "partially decoding", "modifying", and "complementary coding" steps recited in the patent’s claim language.