DCT
4:25-cv-00334
NEC Corporation v. Becker Professional Development Corporation
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NEC Corporation (Japan)
- Defendant: Becker Professional Development Corporation (Delaware)
- Plaintiff’s Counsel: Baker Botts L.L.P.
- Case Identification: 4:25-cv-00334, N.D. Tex., 03/28/2025
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has committed acts of infringement in the district and maintains a regular and established place of business there, specifically citing a physical office location in Dallas. The complaint includes a photograph of building signage and an office door for "Becker Professional Education" to support its allegation of a physical place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s professional education content streaming services infringe a patent related to adaptive bitrate streaming technology.
- Technical Context: The lawsuit concerns adaptive bitrate (ABR) streaming, a technology used to deliver multimedia content over the internet by dynamically adjusting the quality of the video stream based on network conditions and device capabilities to ensure smooth playback.
- Key Procedural History: The complaint notes that the asserted patent, U.S. Patent No. 8,752,101, was the subject of an inter partes review (IPR) proceeding (IPR2023-01239) where the Patent Trial and Appeal Board (PTAB) issued a Final Written Decision finding no challenged claims unpatentable. This prior validation may inform the court's view on the patent's strength. The complaint also alleges Defendant had pre-suit knowledge of the patent via a notice letter.
Case Timeline
| Date | Event |
|---|---|
| 2009-11-05 | '101 Patent Priority Date |
| 2014-06-10 | '101 Patent Issue Date |
| 2023-07-27 | IPR Proceeding Filed against '101 Patent (IPR2023-01239) |
| 2023-10-10 | NEC notice letter sent to Defendant |
| 2025-03-03 | PTAB Final Written Decision in IPR, confirming claims |
| 2025-03-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,752,101 - "DISTRIBUTION SYSTEM," issued June 10, 2014
The Invention Explained
- Problem Addressed: In conventional streaming systems, variations in network communication speed can cause playback issues. If the network is slow, the receiving device may not buffer enough data by the scheduled start time, leading to delayed playback or pauses for re-buffering. Conversely, existing solutions might unnecessarily lower the stream quality to accommodate the weakest possible network conditions, degrading the user experience (Compl. ¶18; ’101 Patent, col. 1:54-64).
- The Patented Solution: The invention provides a method for dynamically determining the optimal code rate (i.e., video quality/bitrate) for a data stream. The system calculates this rate based on two specific inputs: 1) the "remaining time before reproduction start time" (the countdown to when playback is set to begin) and 2) the "available reproduction time" (the amount of playback time corresponding to the data already buffered on the user's device) (’101 Patent, col. 2:38-49, Abstract). This allows the system to intelligently adjust the stream quality to ensure a smooth, timely start to playback without excessive, preemptive quality degradation (Compl. ¶23).
- Technical Importance: This technology offers a more sophisticated approach to adaptive bitrate streaming, aiming to balance the competing goals of minimizing start-up delay and maximizing playback quality for each user's specific network conditions (’101 Patent, col. 2:20-25).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 11, among others (Compl. ¶43). Claim 11 is the focus of the complaint's narrative infringement theory.
- Independent Claim 11 is a method claim comprising the following essential elements:
- Transmitting content data coded at one of a plurality of different code rates.
- At a reception device, simultaneously storing (buffering) and reproducing the content.
- Determining a new code rate based on both a "remaining time before reproduction start time" and an "available reproduction time" from the buffer.
- Changing the transmitted content's code rate to the newly determined rate.
- Starting reproduction at the set start time.
- The complaint reserves the right to assert dependent claims, including 12, 14, and 15, which add further technical limitations such as rules for adjusting the code rate and synchronizing playback among multiple devices (Compl. ¶36, 38, 40, 43).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant Becker’s content streaming services, delivered through its "Becker Web Application," mobile iOS and Android applications, and including software systems provided by Panopto, Inc. (the “Accused Products”) (Compl. ¶14).
Functionality and Market Context
- The Accused Products deliver professional education and exam review courses (e.g., for CPA, CMA, PMP certifications) to customers via streaming video (Compl. ¶14). The complaint alleges these products use adaptive bitrate streaming to deliver content from a transmission device (server) to a reception device (user application) (Compl. ¶14). The complaint alleges that Becker has offered these services for the past six years, covering both current and prior technological systems that used adaptive bitrate streaming functionality (Compl. ¶14).
IV. Analysis of Infringement Allegations
'101 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A distribution method...comprising: transmitting content data, which is one content coded with any one code rate of a plurality of code rates different from each other, to the reception device, by the transmission device; | Defendant’s servers, including those configured with Panopto software, transmit content data for its educational courses to users’ web or mobile applications. The content is available at different code rates to enable adaptive streaming (Compl. ¶27, 46). | ¶27, ¶46 | col. 25:63-67 |
| while receiving the content data transmitted by the transmission device, storing received data of the content data into a storage device and also reproducing the content based on the stored data, by the reception device; | The Accused Products on the user’s device (e.g., web or mobile app) receive and buffer the streaming content in storage while simultaneously playing it back (Compl. ¶23). | ¶23 | col. 26:1-4 |
| determining the code rate based on a remaining time before reproduction start time set as time at which the reception device starts reproduction of the content from a present moment, and based on an available reproduction time... | The complaint alleges the Accused Products practice the claims by using adaptive bitrate streaming, which necessarily involves determining a code rate. The complaint asserts that this determination is based on the claimed parameters (Compl. ¶14, 28). | ¶14, ¶28 | col. 26:5-14 |
| changing the code rate of the content data to be transmitted to the reception device to the determined code rate, by the transmission device; and | Defendant’s servers change the code rate of the content being sent to the user’s device during the transmission, which is the core function of adaptive bitrate streaming (Compl. ¶46). | ¶46 | col. 26:15-17 |
| starting reproduction of the content at the set reproduction start time, by the reception device. | The Accused Products start playing the video content at a set time, which the patented method is designed to ensure happens reliably without delay (Compl. ¶17, 29). | ¶17, ¶29 | col. 26:18-20 |
- Identified Points of Contention:
- Technical Questions: A central question will be one of evidence: what proof does the Plaintiff have that the Accused Products’ adaptive streaming algorithm "determin[es] the code rate" using the specific two-part test recited in Claim 11? The complaint alleges this functionality (Compl. ¶14, 28), but the court will require technical evidence demonstrating that the accused algorithm considers both "remaining time before reproduction start time" and "available reproduction time" as defined by the patent, rather than using a different, non-infringing adaptive streaming logic.
- Scope Questions: The complaint alleges that Becker is liable for joint or divided infringement, in part because its services utilize software from Panopto, Inc. (Compl. ¶14, 47, 49). This raises the question of whether all steps of the claimed method are performed by a single actor or, if not, whether Becker "directs or controls" the other actors (such as its customers or Panopto) under the standards for divided infringement.
V. Key Claim Terms for Construction
The Term: "available reproduction time"
Context and Importance: This term is one of the two critical inputs for the claimed code rate determination step. Its construction will define what kind of buffer measurement or analysis falls within the claim's scope. Practitioners may focus on this term because the infringement analysis will depend on whether the accused system calculates a value corresponding to "a time available for reproducing the content based on the content data stored" in the device's buffer (’101 Patent, col. 26:10-14).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is functional, defining the term by what it represents ("a time available for reproducing...") rather than by a specific calculation method. This may support an argument that any method of calculating remaining playback time from a buffer meets the limitation.
- Evidence for a Narrower Interpretation: The specification describes this in the context of a "buffer part 33b" and a "target available reproduction time Ta" used in specific equations (e.g., Eq. 1, 5) (’101 Patent, col. 7:51-58; col. 10:55-61). A defendant may argue these specific embodiments limit the term to systems that use these or very similar calculations.
The Term: "remaining time before reproduction start time"
Context and Importance: This is the second critical input to the claimed code rate determination. The dispute will center on whether the accused system uses a countdown to a "set" start time as a distinct input for its bitrate logic, or if it uses a different, more generalized metric for assessing network conditions. The patent's claimed solution is distinguished from prior art by its use of this specific forward-looking parameter in combination with the buffer status (Compl. ¶28).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language does not specify how the "reproduction start time" is set or how the "remaining time" is calculated, potentially covering any system that considers the time until playback begins as a factor in bitrate selection.
- Evidence for a Narrower Interpretation: The specification discusses a "reproduction start time setting part" (43) that determines the start time based on factors like activation time and communication speed, and transmits it to the terminal device (’101 Patent, col. 7:11-20; Fig. 2). A party could argue the term should be limited to systems where a specific start time is calculated and managed in this manner.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Becker provides user manuals, training, and demonstrations that instruct its customers on how to use the Accused Products in a way that directly infringes the ’101 Patent (Compl. ¶53). The complaint further alleges contributory infringement, stating the Accused Products are a material part of the invention and not a staple commodity suitable for substantial non-infringing use (Compl. ¶55).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of the ’101 Patent. This knowledge is purportedly from a notice letter sent on October 10, 2023, as well as from NEC's prior lawsuits asserting the same patent against other parties (Compl. ¶50, 54, 61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of "algorithmic implementation": Can Plaintiff produce evidence that Becker’s adaptive streaming technology, which may be provided by Panopto, performs the specific two-factor "determining the code rate" step of Claim 11? The case may turn on whether the accused algorithm uses the patent's specific inputs of "remaining time before reproduction start time" and "available reproduction time," or if it employs a distinct, non-infringing method to achieve a similar result.
- The case will likely involve a question of "divided infringement liability": Given the stated involvement of third-party software from Panopto and the actions of end-users, a central legal issue will be whether Plaintiff can prove that Defendant directs or controls all actors in such a way that it can be held liable for infringement of the entire method claim.
- A third core issue will be one of "claim construction": The viability of the infringement case will depend on how the court construes the key terms "available reproduction time" and "remaining time before reproduction start time." A narrow construction tied to the specific formulas and embodiments in the patent specification could create a significant hurdle for the Plaintiff's infringement proofs.