DCT
2:14-cv-00191
ClearPlay v. DISH Network LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ClearPlay Inc. (Delaware/Utah)
- Defendant: Dish Network LLC, Dish Network Corp., EchoStar Corp., and EchoStar Technologies L.L.C. (Colorado/Nevada/Texas)
- Plaintiff’s Counsel: Beus Gilbert PLLC
- Case Identification: 2:14-cv-00191, D. Utah, 03/13/2014
- Venue Allegations: Plaintiff alleges venue is proper in the District of Utah because Defendants offer products for sale, transact business, and have placed infringing products into the stream of commerce in the district.
- Core Dispute: Plaintiff alleges that Defendants’ Hopper DVR with its “Autohop” commercial-skipping feature infringes five patents related to systems and methods for filtering multimedia content during playback.
- Technical Context: The technology enables the filtering of undesirable content, such as commercials or objectionable scenes, from media streams by using separate navigation data that instructs a playback device when to skip, mute, or otherwise alter the content.
- Key Procedural History: The complaint notes that U.S. Patent Nos. 7,526,784 and 7,543,318 survived inter partes reexamination requests that were rejected by the PTO in 2012. It also states that an inter partes review petition against U.S. Patent No. 7,577,970 was largely rejected by the PTAB in 2013, though some claims remained under review at the time of filing.
Case Timeline
| Date | Event |
|---|---|
| 2000-10-23 | Earliest Priority Date (’799, '784, '318, '970 Patents) |
| 2004-10-20 | Earliest Priority Date (’282 Patent) |
| 2005-05-24 | U.S. Patent No. 6,898,799 Issues |
| 2009-04-28 | U.S. Patent No. 7,526,784 Issues |
| 2009-06-02 | U.S. Patent No. 7,543,318 Issues |
| 2009-08-18 | U.S. Patent No. 7,577,970 Issues |
| 2012 | Dish Network introduces its Autohop technology |
| 2012-02-14 | U.S. Patent No. 8,117,282 Issues |
| 2012-09-01 | Reexamination requests for '784 and '318 Patents rejected by PTO |
| 2013-08-01 | Inter partes review petition for most asserted claims of '970 Patent rejected |
| 2014-03-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,526,784 - "Delivery of navigation data for playback of audio and video content"
The Invention Explained
- Problem Addressed: Prior art methods for creating filtered versions of multimedia content (e.g., a family-friendly movie edit) required altering the original source media, an inefficient process that could not be applied to content already distributed to consumers ('784 Patent, col. 3:35-44, col. 4:7-16).
- The Patented Solution: The invention separates the filtering instructions from the multimedia content itself. It describes a server-side system that provides "navigation objects" to a consumer's playback device ('784 Patent, Abstract). Each object contains data defining a start point, a stop point, and a "filtering action" (e.g., skip or mute) for a specific segment of the content, allowing the playback device to apply the filter dynamically without altering the original media source ('784 Patent, col. 4:45-54).
- Technical Importance: This client-server approach enables a scalable method for distributing and applying content filters to a wide range of existing media, such as DVDs, without requiring manufacturers to create and distribute multiple physical versions of the same title.
Key Claims at a Glance
The complaint asserts infringement of one or more unspecified claims (Compl. ¶31). The following analysis focuses on representative independent claim 1.
- Independent Claim 1 of the ’784 Patent recites a method performed by a server system for assisting a consumer system, including the elements of:
- Obtaining a plurality of "navigation objects," each defining a start position, stop position, and a specific filtering action for a portion of multimedia content.
- Receiving a request from the consumer system for navigation objects corresponding to specific multimedia content.
- Sending the requested navigation objects to the consumer system for processing, which then filters the content by activating the specified filtering action.
U.S. Patent No. 7,543,318 - "Delivery of navigation data for playback of audio and video content"
The Invention Explained
- Problem Addressed: The patent addresses the same problem as the related ’784 Patent: the inefficiency of source-side media filtering ('318 Patent, col. 3:50-59).
- The Patented Solution: This patent claims the consumer-side implementation of the filtering system. It describes a computing system (e.g., a media player) that uses a "multimedia content navigation object" containing a start indicator, an end indicator, and a filtering action like "skip" ('318 Patent, Abstract; col. 6:49-65). The system's processor monitors the playback position of the media and, upon matching the start indicator, executes the filtering action by discontinuing and resuming decoding at the specified points ('318 Patent, Abstract).
- Technical Importance: This patent claims the device-level functionality that executes the filtering instructions, complementing the server-side delivery method claimed in the related ’784 Patent.
Key Claims at a Glance
The complaint asserts infringement of one or more unspecified claims (Compl. ¶36). The following analysis focuses on representative independent claim 1.
- Independent Claim 1 of the ’318 Patent recites a computing system comprising:
- A computer-readable medium containing a "multimedia content navigation object" with a start indicator, an end indicator, a content descriptor, and a skip filtering action.
- A processor configured to:
- Decode and deliver multimedia content.
- Monitor a position code during decoding.
- Execute the skip action when the position code matches the start indicator.
- Discontinue decoding between the start and end indicators and immediately resume decoding after the end indicator.
U.S. Patent No. 6,898,799 - "Multimedia content navigation and playback"
- Technology Synopsis: This patent, a parent to the '970 patent, discloses the foundational client-side filtering system. It describes a "navigator" that monitors the playback position of multimedia content, compares it to "navigation objects" defining start/stop points and filtering actions (e.g., skip, mute), and activates the action at the output side of the decoder, thereby filtering content without modifying the source media (Compl. ¶40; '799 Patent, Abstract).
- Asserted Claims: One or more unspecified claims (Compl. ¶41).
- Accused Features: The Hopper DVR with Autohop technology is alleged to practice the claimed invention (Compl. ¶41).
U.S. Patent No. 7,577,970 - "Multimedia content navigation and playback"
- Technology Synopsis: A continuation of the '799 patent application, this patent further describes the client-side system for filtering content. It focuses on using navigation objects containing start/stop positions and filtering actions to control the decoding process and modify the output to the user (Compl. ¶45; '970 Patent, Abstract).
- Asserted Claims: One or more unspecified claims (Compl. ¶46).
- Accused Features: The Hopper DVR with Autohop technology is alleged to practice the claimed invention (Compl. ¶46).
U.S. Patent No. 8,117,282 - "Media player configured to receive playback filters from alternative storage mediums"
- Technology Synopsis: This patent addresses a specific implementation for delivering filtering data to a media player. It describes a media player with a first memory reader for the primary media (e.g., a DVD drive) and a second, separate memory reader (e.g., a USB port or flash memory interface) for receiving the playback filters, providing an alternative to loading filters from a disc in the primary drive (Compl. ¶50; '282 Patent, Abstract).
- Asserted Claims: One or more unspecified claims (Compl. ¶51).
- Accused Features: The Hopper DVR with Autohop technology is alleged to practice the claimed invention (Compl. ¶51).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are Defendants' "Hopper" model set-top digital video recorder (DVR) boxes that include the "Autohop" feature (Compl. ¶¶1, 14, 31).
- Functionality and Market Context: The Hopper DVRs are manufactured by EchoStar and distributed to subscribers by Dish Network (Compl. ¶1). The Autohop feature, when enabled by a consumer, functions as a filter that automatically skips blocks of commercials during the playback of certain recorded television programs (Compl. ¶1). The complaint alleges this commercial-skipping capability has been a "central focus of Dish Network's marketing efforts and ads," with marketing materials that "touts the ability to 'instantly skip commercials'" (Compl. ¶2).
IV. Analysis of Infringement Allegations
The complaint does not specify which claims are asserted or provide any element-by-element infringement analysis. The allegations are limited to general assertions that the Hopper DVR with Autohop technology infringes claims of the patents-in-suit (Compl. ¶¶31, 36, 41, 46, 51). The following charts summarize a potential infringement theory for representative claim 1 of the two lead patents based on the product description provided in the complaint.
No probative visual evidence provided in complaint.
- 7,526,784 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method... comprising the server system performing the acts of: obtaining a plurality of navigation objects... each... defining a start position, a stop position, and a specific filtering action... | The complaint does not specify the mechanism, but alleges a system that provides the ability to skip commercials. An infringement theory would require that Dish operates a server system that generates or obtains data ("navigation objects") defining the start and end times of commercial breaks and a "skip" action. | ¶¶1, 58 | col. 4:45-54 |
| receiving a request for one or more navigation objects from the consumer system, the request identifying the multimedia content... | This would require that the Hopper DVR (consumer system) sends a request to a Dish server for the commercial-skipping data corresponding to a specific recorded television program. | ¶¶1, 57 | col. 14:45-53 |
| sending the one or more navigation objects to the consumer system for processing... | This would require that the Dish server transmits the commercial timing data to the subscriber's Hopper DVR. | ¶¶1, 56-57 | col. 14:62-65 |
| whereby the consumer system is adapted to filter the multimedia content by activating the filtering action... | The complaint alleges the Hopper DVR, upon user activation of Autohop, uses the received data to automatically skip commercials during playback. | ¶¶1, 58-59 | col. 1:49-56 |
- 7,543,318 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A computing system comprising: a first computer readable media including... a multimedia content navigation object comprising: a start indicator, an end indicator... and a... skip filtering action... | The Hopper DVR allegedly contains memory storing data ("navigation object") that specifies the start and end times of commercial breaks and instructs the device to perform a skip action. | ¶¶1, 66-67 | col. 6:49-65 |
| at least one processor... configured to... monitor a position code of the multimedia content during decoding... | The Hopper DVR's processor allegedly tracks the playback position (e.g., a time code) of the recorded program. | ¶¶1, 67-68 | col. 11:11-25 |
| executing a skip filtering action when the position code matches the start indicator of the multimedia content navigation object... | When the program's playback time reaches the start time of a commercial break as defined in the stored data, the Hopper DVR's processor allegedly initiates the "Autohop" commercial-skipping function. | ¶¶1, 68 | col. 15:26-34 |
| causing the processor to discontinue decoding the multimedia content between the start indicator and the end indicator... | The Autohop feature allegedly prevents the commercial content between the start and end markers from being decoded and displayed. | ¶¶1-2, 68 | col. 5:1-12 |
- Identified Points of Contention:
- Technical Questions: The complaint provides no technical details on how the Autohop feature operates. Key questions will be: What is the exact nature of the data used to identify commercials? How is this data generated, transmitted to, and stored on the Hopper DVR? Does it function as a discrete "navigation object" with defined start/stop positions and an explicit "skip" command, as described in the patents?
- Scope Questions: The patents describe a system for filtering various types of content (violence, language, etc.) from pre-packaged media like DVDs. A central question will be whether the claims can be construed to cover a system that appears dedicated solely to skipping commercial blocks within a broadcast television stream. Does the data identifying a commercial break constitute a "navigation object" as that term is used and defined in the patent specifications?
V. Key Claim Terms for Construction
- The Term: "navigation object"
- Context and Importance: This term is the core of the claimed invention, representing the discrete package of filtering instructions (start, stop, action) that is delivered to and processed by the playback device. The viability of the infringement case may depend on whether the signal, file, or data stream that Dish uses to identify commercial breaks can be defined as a "navigation object." Practitioners may focus on this term because the patents' description appears to contemplate a specific data structure for filtering various content types, which may differ from a simple signal indicating the start and end of a commercial pod.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that "There is no particular limitation on the format of the navigation objects" and that the object store could be "a file, such as a database and the navigation objects may be records within the database" ('784 Patent, col. 4:54-58). This language may support an argument that any data structure that serves the function of defining a start point, stop point, and action should be considered a "navigation object."
- Evidence for a Narrower Interpretation: The patent figures and description consistently show the navigation object as a discrete data structure with distinct fields for "START," "STOP," "ACTION," and "DESCRIPTION" (e.g., '784 Patent, Fig. 3B, item 320b). The detailed description focuses on filtering specific scenes like "scene of bloodshed" ('784 Patent, Fig. 4B). This may support an argument that the term requires a specific, structured data format intended for granular scene-level filtering, not just identifying entire commercial blocks.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement against all Defendants. It claims EchoStar induces by manufacturing and selling the infringing Hopper set-top boxes, while Dish Network induces by marketing, licensing, and distributing the devices to subscribers, highlighting the Autohop feature and intending for end-users to activate it (Compl. ¶¶56-59, 65-68).
- Willful Infringement: The complaint alleges willful infringement based on Defendants' alleged pre-suit knowledge of the ClearPlay patents. The factual basis includes: (1) Defendants' hiring of ClearPlay's former lead patent counsel in 2006, who was allegedly "thoroughly familiar" with the technology (Compl. ¶¶18-22); (2) direct communications in 2005 between ClearPlay's CEO and EchoStar's CTO, which included a technology demonstration (Compl. ¶21); and (3) a 2013 communication where ClearPlay's CEO shared the patents with a Dish Network VP (Compl. ¶24).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical evidence: What is the specific software and data architecture of the Autohop feature? The case will likely require discovery to determine if the mechanism for identifying and skipping commercials functionally and structurally aligns with the "navigation object" framework claimed in the patents, or if it operates on a fundamentally different technical principle.
- A key legal question will be one of claim scope: Can the term "navigation object," which is described in the patents' specifications primarily in the context of filtering discrete, objectionable scenes from packaged media like DVDs, be construed to encompass the data used to identify and skip entire commercial pods in recorded broadcast television?
- Given the detailed allegations of prior knowledge, including the hiring of former counsel and direct corporate communications, a third critical area will be willfulness and intent. The strength of these allegations suggests that claims for enhanced damages and indirect infringement will be a significant part of the litigation, likely to withstand early procedural challenges.