DCT

2:23-cv-00060

Touchstream Tech Inc v. Altice USA Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00060, E.D. Tex., 05/25/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains a regular and established place of business in the district and has committed acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s Xfinity X1 media platform, including its set-top boxes and associated mobile applications, infringes three patents related to using a personal computing device to control media playback on a separate display device.
  • Technical Context: The technology at issue facilitates "casting," where a user controls content from various sources (e.g., DVR, streaming apps) on a television using a separate device like a smartphone, a central feature of modern digital media systems.
  • Key Procedural History: The complaint alleges a history of meetings between Touchstream and Comcast from 2011 to 2017, during which Touchstream purportedly disclosed its patent-pending technology and patent application numbers to Comcast. Subsequent to the filing of this complaint, a disclaimer was filed for U.S. Patent No. 11,086,934 on May 8, 2024, disclaiming the entire scope of claims 1-2 and 5-7, which may impact the scope of that patent's assertion in this litigation.

Case Timeline

Date Event
2011-04-21 Earliest Priority Date for all asserted patents
2011-08-01 Complaint alleges Touchstream/Comcast meetings began
2012-05-21 Complaint alleges Comcast unveiled the Xfinity X1 product
2013-01-15 U.S. Patent No. 8,356,251 Issued
2021-06-29 U.S. Patent No. 11,048,751 Issued
2021-08-10 U.S. Patent No. 11,086,934 Issued
2023-05-25 First Amended Complaint Filed

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

U.S. Patent No. 8,356,251 - "Play Control of Content on a Display Device," issued January 15, 2013

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of using a personal device, such as a mobile phone, to control the playback of web-based media on a larger, remote display like a television, particularly when different types of content require different media players (’251 Patent, col. 1:19-40).
  • The Patented Solution: The invention proposes a server-mediated system to solve this problem. A personal device sends a message to a server containing a "synchronization code" to identify a target display, a content identifier, and a "universal" playback command (e.g., "play"). The server uses the code to route the command, converts the universal command into a format specific to the required media player, and stores the specific command for the display device to retrieve and execute (’251 Patent, Abstract; col. 2:41-67). This architecture decouples the control device from the display device, with the server acting as an intermediary.
  • Technical Importance: This approach provides a framework for a "casting" experience, allowing a user to seamlessly control content from multiple internet sources on a TV using a phone, without the phone itself needing to stream the media or possess player-specific logic (’251 Patent, col. 1:41-48).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶59).
  • The essential elements of claim 1 include:
    • assigning, by a server system, a synchronization code to the display device;
    • receiving, in the server system, a message from a personal computing device that includes the synchronization code;
    • storing, by the server system, a record establishing an association between the devices based on the code;
    • receiving signals from the personal device that specify a video file, a particular media player, and include a universal playback control command;
    • converting, by the server system, the universal command into player-specific programming code by selecting from a plurality of specific commands; and
    • storing information (the video file, media player, and specific code) in a database for the display device to access.

U.S. Patent No. 11,048,751 - "Play Control of Content on a Display Device," issued June 29, 2021

The Invention Explained

  • Problem Addressed: Like its predecessor, this patent addresses the challenge of controlling media from various sources on a remote display device using a separate controller (’751 Patent, col. 1:21-48).
  • The Patented Solution: This invention focuses on the logic executed by the content presentation device (e.g., a set-top box). The device obtains a synchronization code and provides it to a remote computing device (via a server) to establish an association. It then receives messages from the server and, based on the format of the message, selects the appropriate media player application from a plurality of available players to present the content (’751 Patent, Abstract; col. 12:62-col. 13:31).
  • Technical Importance: The invention describes placing the intelligence for dynamic media player selection on the device side, enabling a single presentation device to handle commands for different applications (e.g., Netflix, YouTube, a DVR player) based on messages initiated by a remote controller (’751 Patent, col. 2:35-44).

Key Claims at a Glance

  • The complaint asserts independent claim 12 (Compl. ¶64).
  • The essential elements of claim 12 include:
    • obtaining, by a content presentation device, a synchronization code associated with it;
    • providing the code to a remote computing device to establish an association on a remote server;
    • receiving, from the server, a message based on the stored association;
    • selecting, by the content presentation device, a media player application from a plurality of applications, based at least in part on the format of the received message; and
    • controlling, by the content presentation device, how the selected media player plays the referenced content.

U.S. Patent No. 11,086,934 - "Play Control of Content on a Display Device," issued August 10, 2021

  • Technology Synopsis: This patent describes a method where a media receiver provides a unique identification code to a computing device to establish an association via a server system. Based on this association, the media receiver receives messages that reference content and include commands that have been converted from a universal format (defined by the computing device) to a first format corresponding to the media player type. The receiver then selects the appropriate media player application and controls playback based on the converted commands (’934 Patent, Abstract).
  • Asserted Claims: The complaint asserts independent claim 17 (Compl. ¶69).
  • Accused Features: The complaint accuses the Xfinity X1 system, alleging the X1 STB (media receiver) provides an identifier to a mobile device (computing device) to establish a link, and subsequently receives and executes converted commands to control playback from various applications like DVR, live TV, or Netflix (Compl. ¶¶ 70, 51-52).

III. The Accused Instrumentality

Product Identification

  • The "accused Xfinity functionalities" performed through the operation of the Xfinity X1 platform, which includes the standalone X1 Set Top Box (“STB”) and associated mobile applications like the "Xfinity Stream" app and "Xfinity TV Remote" app (Compl. ¶¶35, 42-43).

Functionality and Market Context

  • The Xfinity X1 platform is described as providing users with a unified interface to access and control content from a variety of sources, including live TV, DVR recordings, On Demand content, and third-party web-based streaming applications such as Pandora and Netflix (Compl. ¶¶37, 40). The system allows a user to employ a mobile application on a personal device to browse for media and transmit control commands (e.g., "Watch on TV") to an X1 STB, which then initiates and manages playback on a connected television (Compl. ¶¶43, 49-50). The complaint alleges that as of December 31, 2021, Comcast had 17.5 million X1 customers (Compl. ¶34). A screenshot provided in the complaint shows the Xfinity user interface presenting a menu of third-party video applications including Netflix, YouTube, and Prime Video (Compl. p. 12).

IV. Analysis of Infringement Allegations

8,356,251 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
assigning, by a server system, a synchronization code to the display device The X1 STB is assigned unique identifiers, including a "Device ID" and a user-friendly "Device Name" (e.g., "Living Room"), which are displayed to the user in a settings menu (Compl. p. 14). ¶¶44, 60 col. 5:36-49
receiving, in the server system, a message from a personal computing device ... wherein the message includes the synchronization code The Xfinity server system receives a message from the mobile app after the user selects a specific STB (e.g., "Living Room") to control from a list of available devices (Compl. p. 16). ¶¶47-48, 60 col. 4:43-55
storing, by the server system, a record establishing an association between the personal computing device and the display device based on the synchronization code The server system allegedly stores a record associating the user's mobile device with the selected X1 STB, enabling the mobile app to continually recognize and control that specific STB. ¶¶53, 60 col. 5:5-9
receiving, in the server system, one or more signals from the personal computing device, the one or more signals specifying a video file ... and identifying a particular media player ... the one or more signals further including a universal playback control command ... A user on the mobile app selects content (specifying the video and player, e.g., Netflix) and initiates a command like "Watch on TV" (Compl. p. 16), which is alleged to be a universal command. ¶¶49, 51, 60 col. 4:46-54
converting, by the server system, the universal playback control command into corresponding programming code ... wherein converting ... includes selecting from among a plurality of specific commands ... Xfinity servers are alleged to convert a universal command like "play" into a specific command for the required media player, such as a "tune to channel" command for live TV or a different command for a third-party app like Netflix. ¶¶51-52, 60 col. 6:10-25
storing, in a database associated with the server system, information for transmission to or retrieval by the display device, wherein the information specifies the video file to be acted upon, identifies the particular media player ... and includes the corresponding programming code ... The server system is alleged to store the converted, player-specific command and associated content information in a database for the X1 STB to retrieve and execute. ¶60 col. 6:40-50

Identified Points of Contention

  • Scope Questions: A primary question is whether the "Device ID" and "Device Name" used by the Xfinity system, which appear to be persistent identifiers, meet the claim limitation of a "synchronization code." The patent's specification primarily illustrates this code as a temporary, on-screen value used for initial pairing (e.g., ’251 Patent, FIG. 7A), raising the question of whether a persistent device identifier falls within the term's scope.
  • Technical Questions: The infringement theory relies on the "converting" step occurring on the "server system." A key factual question will be what evidence shows that Comcast's servers, rather than the X1 STB itself, perform the translation from a "universal" command to a player-specific one as required by claim 1.

11,048,751 Patent Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
obtaining, by a content presentation device, a synchronization code associated with the content presentation device, wherein the associated synchronization code is stored on a remote server device The X1 STB (the content presentation device) obtains its own unique "Device ID" and "Device Name." A screenshot of the X1 STB's "About" screen shows these identifiers (Compl. p. 14). ¶¶44, 65 col. 12:65-13:2
providing, by the content presentation device, the synchronization code to a remote computing device in communication with the remote server device, wherein the provided synchronization code causes the remote server device to store an association... The X1 STB's identity is made available (via the server) to the mobile app, allowing the user to select it for control and thereby cause the server to store an association between the app and the STB (Compl. p. 16). ¶¶47-48, 65 col. 13:3-9
receiving, by the content presentation device, a first message that includes at least one command in a first format, the first message being received based at least in part on the stored association... The X1 STB receives a message from the server that was initiated by a user command on the associated mobile app. ¶¶50-51, 65 col. 13:10-18
selecting, by the content presentation device, a first media player application from a plurality of media player applications based at least in part on the first format of the first message, the first media player application being selected to play a first piece of content... Upon receiving the message, the X1 STB allegedly selects the appropriate application (e.g., the Netflix app, the DVR player, or the live TV tuner) from a plurality of available players to play the requested content. A visual shows the menu of available applications on the X1 STB (Compl. p. 12). ¶¶51, 55, 65 col. 13:19-24
controlling, by the content presentation device, how the selected first media player application plays the referenced first piece of content based on a first command of the at least one command in the first format... The X1 STB then controls the selected application to begin playback of the content as instructed by the command from the mobile device. ¶¶51, 65 col. 13:25-31

Identified Points of Contention

  • Scope Questions: This claim requires the content presentation device (the STB) to perform the "selecting" of the media player. The dispute may center on whether the STB is making an autonomous decision or merely executing an explicit instruction from the server (e.g., "Launch Netflix app with ID 123").
  • Technical Questions: What evidence will show that the STB's selection is based "on the first format of the first message," as the claim requires? The analysis will focus on whether the message's structure or format—as opposed to merely its content (e.g., an appId field)—drives the selection logic within the STB.

V. Key Claim Terms for Construction

The Term: "synchronization code" (’251 Patent, cl. 1; ’751 Patent, cl. 12)

  • Context and Importance: This term is foundational for establishing the link between the control device and the display device. Its construction is critical because the infringement theory equates this term with Comcast's "Device ID" and "Device Name."
  • Intrinsic Evidence for a Broader Interpretation: The specification states the code is "uniquely associated with the particular display device" (’251 Patent, col. 5:31-33), which could support an argument that any unique identifier serves this function.
  • Intrinsic Evidence for a Narrower Interpretation: The primary embodiment described and illustrated shows the code being displayed on a "splash page" on the display device for the user to scan or enter into the mobile device, suggesting a temporary, session-based code for pairing rather than a persistent hardware or account identifier (’251 Patent, col. 5:36-49; FIG. 7A).

The Term: "universal playback control command" (’251 Patent, cl. 1)

  • Context and Importance: This term is central to the "converting" limitation, which requires a command from the mobile device to be "universal" and then translated by the server into a player-specific format.
  • Intrinsic Evidence for a Broader Interpretation: The patent describes this as a "standard or universal command (e.g., play, pause, etc.)" (’251 Patent, col. 6:12-14), which could be interpreted to cover any generic command originating from a standard user interface button.
  • Intrinsic Evidence for a Narrower Interpretation: The specification explicitly links this term to a "universal API adapter" that interprets the universal command and converts it into a "specific command recognized by the media player" (’251 Patent, col. 6:10-25; FIG. 5). This suggests a structured architecture where the command is designed to be agnostic and require translation, which may be different from a simple user interface label that triggers distinct backend pathways.

VI. Other Allegations

Indirect Infringement

  • While not pleaded as separate counts, the complaint contains factual allegations that may support a theory of induced infringement. It alleges Comcast "directs or controls" users to perform the patented steps by advertising the functionality and providing instructional materials, such as user manuals and online support articles, that allegedly guide users to operate the system in an infringing manner (Compl. ¶¶ 57, 36, 40).

Willful Infringement

  • The complaint alleges willful infringement for all asserted patents. The basis for this allegation is a series of alleged meetings and communications between Plaintiff and Defendant from 2011 to 2017. During these interactions, Plaintiff claims it disclosed its "patent-pending" technology and provided the specific patent application numbers that led to the patents-in-suit, thereby giving Defendant alleged pre-suit knowledge of the inventions (Compl. ¶¶ 28-31).

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

  • A core issue will be one of definitional scope: can the term "synchronization code," which the patents primarily illustrate as a temporary, on-screen pairing value, be construed to cover the persistent "Device ID" and "Device Name" used in the accused Xfinity system?
  • A key evidentiary question will be one of architectural function: where does the critical logic reside in the accused system? Does Comcast's server perform the "conversion" of universal commands as required by the ’251 patent, or does the Xfinity STB perform the intelligent "selection" of media players based on message format as required by the ’751 patent? The evidence may create a situation where infringement of one patent's architecture precludes infringement of the other.
  • A central question for willfulness will be one of pre-suit knowledge: what did Comcast know about the patented technology and when, based on the alleged multi-year history of meetings and technology disclosures? The resolution of these factual allegations will be critical to the determination of intent.