DCT
2:21-cv-00217
Boxcast Inc v. Resi Media LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BoxCast Inc (Delaware)
- Defendant: Resi Media LLC (Texas); Pushpay USA Inc (Delaware); Pushpay Holdings Ltd (New Zealand)
- Plaintiff’s Counsel: McKool Smith; Calfee Halter & Griswold
- Case Identification: 2:21-cv-00217, E.D. Tex., 01/03/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant Resi Media LLC resides there with its principal place of business in Plano, and Defendant PushPay USA Inc. has a regular and established place of business in Plano.
- Core Dispute: Plaintiff alleges that Defendants’ live video streaming platform and associated encoder hardware infringe patents related to methods for autonomous broadcasting and secure data transmission protocols.
- Technical Context: The technology addresses the simplification and automation of live video streaming, a market segment that has grown in significance with the proliferation of remote events.
- Key Procedural History: The complaint references a prior lawsuit filed by BoxCast against YSL, LLC, asserting the ’574 Patent. In that case, the U.S. District Court for the Southern District of Alabama issued a claim construction order that the complaint characterizes as favorable to BoxCast on key terms. The BoxCast v. YSL case subsequently settled. This prior judicial interpretation, while not binding, may be influential in the current litigation.
Case Timeline
| Date | Event |
|---|---|
| 2010-03-11 | ’574 Patent - Earliest Priority Date |
| 2016-07-05 | ’317 Patent - Earliest Priority Date |
| 2017-06-20 | ’574 Patent - Issue Date |
| 2017-12-13 | BoxCast files suit against YSL, LLC asserting the ’574 Patent |
| 2018-12-11 | ’317 Patent - Issue Date |
| 2020-02-21 | Claim Construction Order issued in BoxCast v. YSL litigation |
| 2020-05 | BoxCast and Resi initiate business discussions |
| 2020-12-30 | BoxCast sends infringement letter to Resi regarding the patents-in-suit |
| 2021-08-23 | Pushpay Inc acquires Resi |
| 2022-01-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,686,574 - "Systems and methods for autonomous broadcasting"
Issued June 20, 2017
The Invention Explained
- Problem Addressed: The complaint describes that, at the time of the invention, mass adoption of live streaming was hindered by two main hurdles: the need for a user to be physically present to operate broadcasting hardware, and the technical expertise required to reconfigure network firewalls and routers that would otherwise block remote control of that hardware (Compl. ¶¶ 28-29).
- The Patented Solution: The invention is a method for "autonomous" broadcasting where a device (an "ABD") is placed behind a standard router without any special network configuration (Compl. ¶34). The device itself initiates communication with an external server to receive schedule data (e.g., start and end times). Based on this remotely-provided schedule, the device automatically begins receiving digital content from a camera, transmits it to a streaming server, and ceases transmission at the scheduled end time, all without direct user intervention at the device's physical location ('574 Patent, Abstract; col. 24:50-25:12).
- Technical Importance: This technology aimed to make live broadcasting accessible to non-technical users by creating a "plug-and-play" system that did not require on-site operation or complex IT-level network configuration (Compl. ¶29).
Key Claims at a Glance
- The complaint asserts independent claims 1, 12, and 22 (Compl. ¶81).
- Essential elements of independent method claim 1 include:
- Situating an autonomous broadcast device (ABD) behind a router that prevents remote access.
- The ABD autonomously performing actions without modification to the router, including:
- Issuing a request to a first server and receiving data relating to a recording start time.
- Receiving digital content from a proximate recording device after the start time.
- Transmitting streaming information to a second server.
- Transmitting the digital content to the second server contemporaneously with the live event.
- Receiving data relating to a recording end time from the first server.
- Ceasing transmission based on the data relating to the recording end time.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,154,317 - "System, Method, and Protocol for Transmission of Video and Audio Data"
Issued December 11, 2018
The Invention Explained
- Problem Addressed: The patent's background describes shortcomings of conventional streaming protocols like Real-time Transport Protocol (RTP) over User Datagram Protocol (UDP). These shortcomings include vulnerability to packet loss, eavesdropping by third parties, and the injection of spoofed content by attackers ('317 Patent, col. 1:31-2:18).
- The Patented Solution: The patent proposes an improved "backhaul protocol" for transmitting video and audio data. The invention builds upon the autonomous broadcasting method of the '574 Patent but adds the specific requirement that the digital content be transmitted using a protocol that defines both an "encryption scheme" and an "error correction scheme" ('317 Patent, Claim 1). This protocol is designed to protect data from eavesdropping and allow for recovery from occasional packet loss without requiring retransmission ('317 Patent, col. 7:41-8:43).
- Technical Importance: This invention aimed to increase the security and reliability of live streaming over public internet connections, addressing concerns about content integrity and transmission quality inherent in standard protocols ('317 Patent, col. 2:9-18).
Key Claims at a Glance
- The complaint asserts independent claims 1, 21, and 29 (Compl. ¶¶ 128-130).
- Essential elements of independent method claim 1 are nearly identical to claim 1 of the ’574 Patent, with the addition of the final two limitations:
- ...wherein the digital content is transmitted to the second server according to a first protocol,
- wherein the first protocol defines an encryption scheme for the digital content; and
- wherein the first protocol defines an error correction scheme for the digital content.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendants’ "Resi's Live Streaming Platform," which includes hardware devices such as the "RAY" and "PRISM" series encoders (collectively, the "Resi Encoders") (Compl. ¶¶ 9-10, 62).
Functionality and Market Context
- The complaint alleges the Resi products are designed to "Automate everything" in the live streaming process (Compl. ¶62). Users can reportedly set a recording schedule via a web interface, which is stored on a remote Resi server (Compl. ¶65). The Resi Encoders, operating behind a customer's router, then allegedly "receive a status update from Control every 45 seconds which may update what it's [sic] current behavior is (start or stop) depending on a schedule" (Compl. ¶66). For the ’317 Patent, the complaint alleges that Resi's streaming service uses a proprietary protocol called Resilient Streaming Protocol (“RSP”), which is alleged to include both an encryption scheme and an error correction scheme (Compl. ¶¶ 115-119). The products are targeted at customers such as churches for streaming weekly services and other recurring events (Compl. ¶¶ 11, 62).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’574 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| issue a request via the Internet connection to a first server situated outside the router and receive data relating to a recording start time of a live event from the first server in response to the request | The Resi Encoders issue frequent requests to a Resi server and receive a "status update" that contains start or stop instructions based on a user-defined schedule. | ¶¶64, 66 | col. 28:1-12 |
| receive digital content of the live event after the recording start time from a digital recording device proximate to the live event | While recording, the Resi Encoders receive digital content from a proximate recording device. | ¶68 | col. 28:13-16 |
| transmit the digital content via the Internet connection to the second server contemporaneously with the live event and based on the data relating to the recording start time | The Resi Encoders transmit the digital content to at least one server operated by Resi, which in turn streams the content to users. | ¶¶69-70 | col. 28:19-25 |
| receive data relating to a recording end time for the live event from the first server via the Internet connection; and | The Resi Encoders receive a "status update" from the Resi server that contains a "stop" instruction based on the schedule, which constitutes data relating to a recording end time. | ¶66 | col. 28:26-29 |
| cease transmission of the digital content based on the data relating to the recording end time. | The Resi Encoders determine whether to stop recording based on the information (the "status update") transmitted from the Resi server. | ¶67 | col. 28:30-32 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether a periodic "status update" that dictates behavior constitutes "receiv[ing] data relating to a recording start time," or if the claim requires receiving a more complete schedule file. The complaint cites a prior claim construction order finding the term may include a "command or instruction" (Compl. ¶51).
- Technical Questions: The analysis may focus on whether the Resi Encoder acts "autonomously" as required by the claim's preamble. A potential dispute is whether an encoder that polls for instructions every 45 seconds is performing actions autonomously or is instead being remotely controlled in a manner distinct from the patent's teachings.
’317 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [The first six operative elements are identical to the '574 Patent claim chart above] | [The corresponding allegations are identical to the '574 Patent claim chart above] | ¶¶108-114 | col. 38:29-53 |
| wherein the digital content is transmitted to the second server according to a first protocol, wherein the first protocol defines an encryption scheme for the digital content | Resi's streaming service uses its Resilient Streaming Protocol ("RSP"), which allegedly includes an encryption scheme. This is supported by the allegation that RSP uses internet port 443, which is typically used for secure, encrypted communications. | ¶¶115-117 | col. 38:57-61 |
| and wherein the first protocol defines an error correction scheme for the digital content. | Resi's RSP allegedly includes an error correction scheme, supported by marketing claims that RSP is "gapless and error-free" and that "there are no video errors that need to be corrected after the live event." | ¶¶115, 119 | col. 38:62-64 |
- Identified Points of Contention:
- Scope Questions: The dispute may center on the technical definitions of "encryption scheme" and "error correction scheme." The question will be whether the functions allegedly performed by Resi's RSP meet the definitions of those terms as they would be understood by a person of ordinary skill and as potentially defined by the patent's specification.
- Technical Questions: A key evidentiary question will be what technical mechanisms Resi's RSP actually uses to achieve reliability and security. The complaint relies on circumstantial evidence (use of port 443, marketing claims), raising the question of what direct evidence exists that RSP performs the specific functions required by the claims.
V. Key Claim Terms for Construction
The Term: "autonomously performs"
Context and Importance: This term from the preamble of claim 1 of both patents is foundational to the infringement theory. Whether the Resi Encoders, which allegedly poll a server for "start or stop" commands, are acting "autonomously" will be a central point of dispute. Practitioners may focus on this term because it distinguishes the invention from systems that are directly and continuously controlled.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes a system where an event can be scheduled in advance from a remote location, and the broadcasting device will carry out the broadcast without "user intervention required at the location of the ABD" ('317 Patent, col. 2:36-39). This could support a reading where "autonomously" means free from local, physical user intervention, while still allowing for remote electronic control via a schedule.
- Evidence for a Narrower Interpretation: The specification describes the ABD "downloading schedule data" ('317 Patent, col. 2:41). This could support an argument that "autonomously" requires the device to operate based on a complete, pre-loaded schedule, rather than by continuously polling an external server for real-time commands.
The Term: "data relating to a recording start time"
Context and Importance: This term is critical because the accused system allegedly receives a "status update" containing a "(start or stop)" command (Compl. ¶66). Whether this command constitutes "data relating to a recording start time" will likely be contested.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes a "scheduler web site" used to determine a start time, which suggests that the data originates from a scheduling system ('317 Patent, col. 2:40-43). This could support the view that any data from that scheduler which causes the recording to begin, including a direct command, falls within the claim's scope.
- Evidence for a Narrower Interpretation: Figures in the patent depict a user interface with fields for entering a specific "Start time" (e.g., "12:00 PM") ('574 Patent, FIG. 21, element 1832). This may support a narrower construction requiring the data to be temporal in nature, rather than a simple binary command.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by Defendants providing users with instructions, technical support, and marketing materials that allegedly direct and encourage them to use the Resi Encoders in an infringing manner (Compl. ¶¶ 82, 132). It further alleges contributory infringement, stating that the Resi Encoders are non-staple articles of commerce provided with full knowledge that they are used as a material part of the claimed inventions (Compl. ¶¶ 83, 133).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint states that BoxCast informed Resi of the patents-in-suit and its infringement allegations in a letter dated December 30, 2020 (Compl. ¶51). For PushPay, willfulness is alleged based on its acquisition of Resi on August 23, 2021, after the lawsuit was filed, with alleged full knowledge of the pending litigation and after conducting its own analysis of the patents (Compl. ¶¶ 54-56, 99).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "autonomously," which suggests independent operation, be construed to cover a device that polls an external server for commands every 45 seconds? The outcome may depend heavily on the weight given to the claim construction from the prior BoxCast v. YSL litigation.
- A second core issue will be one of technical operation: Does the accused system's "status update" containing a simple "start" or "stop" command function in the same way as the claimed method of "receiv[ing] data relating to a recording start time"? This question moves beyond pure claim construction into the factual details of how the accused system operates compared to the patent's teachings.
- A key evidentiary question will be one of technical proof for the ’317 Patent: Can Plaintiff produce sufficient technical evidence to demonstrate that Defendants’ proprietary "Resilient Streaming Protocol" in fact implements both an "encryption scheme" and an "error correction scheme" as required by the claims, moving beyond the complaint's reliance on marketing language and the use of a secure internet port?