DCT

2:23-cv-00552

DISH Tech LLC v. MG Premium Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00552, D. Utah, 03/31/2025
  • Venue Allegations: Venue is alleged to be proper in the District of Utah because Defendants are foreign entities with no principal place of business in the U.S. and because the inventive work for the patents-in-suit, including the location of all named inventors, is alleged to have occurred in Utah.
  • Core Dispute: Plaintiff alleges that Defendants’ numerous adult-oriented streaming websites infringe a portfolio of six patents related to foundational adaptive bitrate (ABR) streaming technology.
  • Technical Context: Adaptive bitrate streaming technology is a core component of modern video-over-internet delivery, enabling services to adjust video quality in real-time based on a user's network conditions to provide a smooth viewing experience.
  • Key Procedural History: The complaint notes that U.S. Patent Nos. 9,407,564 and 10,469,554 were previously asserted in an International Trade Commission (ITC) action where their claims were found not invalid. The complaint also details pre-suit correspondence with Defendants beginning in March 2023 and a related declaratory judgment action filed by an alleged affiliate of Defendants in the Northern District of California, which was dismissed for lack of personal jurisdiction over the Plaintiffs.

Case Timeline

Date Event
2004-04-30 Earliest Priority Date for all Asserted Patents
2014-10-21 U.S. Patent No. 8,868,772 Issues
2016-08-02 U.S. Patent No. 9,407,564 Issues
2019-11-05 U.S. Patent No. 10,469,554 Issues
2021-03-16 U.S. Patent No. 10,951,680 Issues
2022-10-11 U.S. Patent No. 11,470,138 Issues
2023-03-17 DISH sends notice letter to MindGeek (Aylo)
2023-06-13 U.S. Patent No. 11,677,798 Issues
2023-07-25 *MG Freesites Ltd v. Dish Tech LLC* files Declaratory Judgment action in N.D. Cal.
2023-08-01 MindGeek rebrands as Aylo
2024-01-24 N.D. Cal. court dismisses Declaratory Judgment action
2025-03-31 First Amended Complaint Filed

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

U.S. Patent No. 10,469,554 - "Apparatus, system, and method for multi-bitrate content streaming"

  • Issued: November 5, 2019.

The Invention Explained

  • Problem Addressed: The patent’s background section describes that, at the time of the invention, internet streaming sacrificed video quality for immediate access and was vulnerable to network failures, making it inferior to downloading files or traditional cable and satellite delivery (U.S. Pat. No. 10,469,554, col. 2:1-11). It identifies a need for a system that alleviates the "problems of reliability, efficiency, and latency" in existing streaming systems (’554 Patent, col. 2:39-41).
  • The Patented Solution: The invention segments a media file into smaller pieces, or "streamlets," and encodes each piece at multiple different bitrates (e.g., low, medium, and high quality) (Compl. ¶ 96; ’554 Patent, Abstract). A client device (e.g., a computer or mobile phone) requests these streamlets sequentially using standard HTTP protocols. The client continuously monitors network performance and can seamlessly switch between bitrates by requesting the next streamlet from a higher or lower quality stream, ensuring uninterrupted playback at the best possible quality (’554 Patent, col. 6:50-65).
  • Technical Importance: This client-centric approach using standard web protocols (HTTP) eliminated the need for expensive, proprietary streaming servers and made high-quality, scalable video streaming over the public internet commercially viable (Compl. ¶¶ 99-100).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 15, and 25, among others (Compl. ¶ 125).
  • Essential Elements of Independent Claim 1 (System):
    • A storage device storing live event video.
    • The video is encoded at a plurality of different bitrates (low, medium, high quality streams).
    • Each stream comprises a group of "streamlets," with each streamlet corresponding to a portion of the video.
    • At least one stream is encoded at a bitrate of no less than 600 kbps.
    • The first streamlet of each quality stream has the same duration and encodes the same portion of the live event video, but at a different bitrate than the others.
  • The complaint reserves the right to assert dependent claims (Compl. ¶ 125).

U.S. Patent No. 11,677,798 - "Apparatus, system, and method for multi-bitrate content streaming"

  • Issued: June 13, 2023.

The Invention Explained

  • Problem Addressed: This patent shares a specification with the ’554 Patent and addresses the same fundamental problems of reliability, quality, and latency in early internet video streaming systems (Compl. ¶ 92; U.S. Pat. No. 11,677,798, col. 2:1-11).
  • The Patented Solution: The solution is identical to that described in the ’554 Patent: segmenting a media file into "streamlets" encoded at multiple bitrates, which are then requested by an intelligent client that adapts to network conditions by switching between streams (’798 Patent, Abstract). This patent focuses on "digital content" generally, rather than being limited to "live event video."
  • Technical Importance: As with the parent technology, this approach was crucial for enabling the widespread adoption of high-quality streaming for both live and on-demand content over the internet (Compl. ¶¶ 99-100).

Key Claims at a Glance

  • The complaint asserts independent claim 1, among others (Compl. ¶ 156).
  • Essential Elements of Independent Claim 1 (System):
    • A storage device storing digital content.
    • The content is encoded at a plurality of different bitrates (first, second, third bit rate streams).
    • Each stream comprises a group of "streamlets."
    • At least one stream is encoded at a bitrate of no less than 600 kbps.
    • The first streamlet of each stream has the same duration and encodes the same first temporal portion of the digital content, but at different bitrates.
  • The complaint reserves the right to assert dependent claims (Compl. ¶ 156).

U.S. Patent No. 9,407,564 - "Apparatus, system, and method for adaptive-rate shifting of streaming content"

  • Issued: August 2, 2016 (Compl. ¶ 87).
  • Technology Synopsis: The patent describes a method for an end-user station to present rate-adaptive streams. It involves a media player requesting sequential files from a server where multiple copies of the video exist at different bitrates, and automatically shifting between these copies based on network performance determinations (Compl. ¶ 187).
  • Asserted Claims: At least claims 1-2, 4-5, 8-9, 11, and 15 are asserted (Compl. ¶ 186). Independent claim 8 is a method claim.
  • Accused Features: The Accused Streaming Services allegedly infringe by using a media player that adapts requests for video segments of varying quality based on the user's network connection (Compl. ¶ 188).

U.S. Patent No. 10,951,680 - "Apparatus, system, and method for multi-bitrate content streaming"

  • Issued: March 16, 2021 (Compl. ¶ 88).
  • Technology Synopsis: This patent describes a server-side process for streaming video. It involves storing streams as groups of streamlets, receiving requests from an end-user station that specify a desired bitrate, retrieving the corresponding streamlet, and sending it to the user (Compl. ¶ 217).
  • Asserted Claims: At least claims 1-6, 10-22, and 24-29 are asserted (Compl. ¶ 216). Independent claim 22 is a process claim.
  • Accused Features: The servers of the Accused Streaming Services are alleged to infringe by storing and providing video segments of varying quality in response to requests from end-user devices that make determinations about the appropriate quality level (Compl. ¶ 218).

U.S. Patent No. 8,868,772 - "Apparatus, system, and method for multi-bitrate content streaming"

  • Issued: October 21, 2014 (Compl. ¶ 89).
  • Technology Synopsis: The patent describes a method for presenting rate-adaptive streams that involves a media player requesting sequential files over TCP connections. The player repeatedly generates performance factors based on network conditions to determine when to shift to higher or lower quality copies of the video files stored on the server (Compl. ¶ 248).
  • Asserted Claims: At least claims 1-4, 6-9, and 14-20 are asserted (Compl. ¶ 247). Independent claim 1 is a method claim.
  • Accused Features: The Accused Streaming Services allegedly infringe by presenting video segments and adapting requests for subsequent segments based on the quality of the network connection (Compl. ¶ 249).

U.S. Patent No. 11,470,138 - "Apparatus, system, and method for multi-bitrate content streaming"

  • Issued: October 11, 2022 (Compl. ¶ 90).
  • Technology Synopsis: This patent describes an end-user station for streaming video. The station's processor executes instructions to establish a connection, select a specific quality stream based on a determination, request a streamlet from that stream, and provide the received streamlet for playback (Compl. ¶ 281).
  • Asserted Claims: At least claims 1-4, 7, 14-18, 21-26, and 28-30 are asserted (Compl. ¶ 280). Independent claim 14 is an end user station claim.
  • Accused Features: The Accused Streaming Services are alleged to comprise a system for streaming video segments to an end-user station, adapting requests based on network quality, thereby causing infringement (Compl. ¶ 282).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the "Accused Streaming Services," which encompass dozens of adult-oriented subscription websites allegedly owned or operated by the Defendants, including Brazzers, Digital Playground, Men.com, Reality Kings, and others (Compl. ¶¶ 4, 6). The complaint provides a screenshot from a website’s terms of service stating it is "owned and operated by: Aylo Billing" to support this allegation (Compl. ¶ 7).

Functionality and Market Context

The complaint alleges that these services provide live and on-demand video streams to users in the United States using the HTTP Live Streaming (HLS) protocol (Compl. ¶ 108). This technology is alleged to inherently practice the patented adaptive bitrate streaming methods (Compl. ¶ 109). The services are further alleged to utilize U.S.-based Content Delivery Networks (CDNs) to distribute content to U.S. users, including those in Utah (Compl. ¶¶ 51-52). A screenshot of the BangBros website displaying a message specifically targeted to users in Utah regarding state law is presented as evidence of Defendants’ intent to serve users in the forum state (Compl. p. 21). Plaintiff alleges Defendants generate billions of dollars in revenue from tens of millions of users in the United States (Compl. ¶ 45).

IV. Analysis of Infringement Allegations

The complaint references exemplary claim charts provided as exhibits but does not include them in the body of the pleading. The narrative infringement theory is summarized below.

U.S. Patent No. 10,469,554 Infringement Allegations

The complaint alleges that the Accused Streaming Services infringe the ’554 Patent by providing live video streams to subscribers in the United States (Compl. ¶ 130). The core of the allegation is that these services function by receiving live video, encoding it into segments ("streamlets") at different quality levels, and adapting the requests for these segments based on the user's network connection, thereby meeting the limitations of the asserted claims (Compl. ¶ 127). A screenshot of the Brazzers website showing a link to "LIVE CAMS" is included to demonstrate the offering of live video content (Compl. p. 17).

U.S. Patent No. 11,677,798 Infringement Allegations

The infringement theory for the ’798 Patent is substantially similar to that for the ’554 Patent but is directed at both live streams and on-demand videos, consistent with the claim language covering "digital content" rather than only "live event video" (Compl. ¶ 157). The complaint alleges that Defendants' services provide on-demand videos using the same adaptive bitrate streaming system, which involves providing segments of varying quality based on the user's network connection, thus performing all limitations of at least claim 1 (Compl. ¶ 160).

Identified Points of Contention

  • Technical Questions: A primary technical question will be whether the specific implementation of the HLS protocol used by the Accused Streaming Services meets the precise structural requirements of the claims. For example, claims in both the ’554 and ’798 patents require that the "first streamlet" of each quality level "encodes the same first portion" of the video content. The litigation will likely involve detailed factual discovery into whether the segments generated by Defendants' systems exhibit this exact temporal alignment.
  • Scope Questions: For the ’554 Patent, a potential point of contention may be whether the "live cam" content offered by the accused services (Compl. p. 17) qualifies as a "live event video" as that term is used in the claims.

V. Key Claim Terms for Construction

  • The Term: "streamlet"

  • Context and Importance: This term is the fundamental building block of the claimed invention. Its construction is critical because the infringement case depends on whether the video segments generated by the widely-used HLS protocol, which Defendants allegedly employ, fall within the scope of this term.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification provides a broad definition, stating a streamlet refers to "any sized portion of the content file" (’554 Patent, col. 7:40-41). This language could support an interpretation covering various types of video segments, including those used in HLS.
    • Evidence for a Narrower Interpretation: The specification also describes a streamlet as being "encapsulated as an independent media object" and provides examples of a fixed two-second duration (’554 Patent, col. 7:42-44). A defense argument may arise that HLS segments are not "independent media objects" in the specific manner disclosed, potentially narrowing the claim scope to exclude them.

  • The Term: "encodes the same first portion of the live event video" / "encodes the same first temporal portion of the digital content"

  • Context and Importance: This limitation requires precise temporal alignment of the initial video segments across all available bitrate streams. Practitioners may focus on this term because infringement will depend on factual evidence showing that the accused HLS streams are generated with this specific alignment, rather than a less precise or different alignment method.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The complaint describes this concept as a "common alignment of the streamlets in each set" that "allows a playback device to select one quality of streamlet... and... select a different quality of streamlet from the subsequent set" (Compl. ¶ 98). This suggests the purpose is to enable seamless switching, which might support construing the term to cover any alignment that achieves this functional result.
    • Evidence for a Narrower Interpretation: The plain language requires that the encoded video content itself be the "same," not merely that the segments share a start time. This could support a narrower construction requiring a showing of frame-accurate or content-identical portions, which may present a higher evidentiary bar for infringement.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. It claims Defendants had knowledge of the patents at least as of a March 17, 2023 notice letter (Compl. ¶ 135). Inducement is alleged based on Defendants providing the streaming services and associated video player software, which encourages and instructs end users to perform the infringing acts (Compl. ¶¶ 136, 138). Contributory infringement is alleged on the basis that the Accused Streaming Services are a material part of the invention, are especially adapted for infringement, and have no substantial non-infringing uses (Compl. ¶ 146).
  • Willful Infringement: The complaint explicitly alleges "willful infringement" (Compl. ¶ 1). The basis for this allegation is the alleged continuation of infringing activities after Defendants received notice of the patents and the alleged infringement, starting with the March 17, 2023 letter (Compl. ¶ 135).

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

  • A central threshold issue may be one of corporate responsibility: The complaint alleges a complex web of foreign entities are responsible for the accused services. A key question will be whether Plaintiffs can present sufficient evidence to establish that the named Defendants exercise the necessary operational control over the dozens of accused websites to be held liable for infringement in the United States.
  • A core issue will be one of technical specificity: Does the accused HLS implementation meet the granular requirements of the claims? The case may turn on evidence demonstrating whether video segments in different bitrate streams are generated with the precise temporal alignment and structural relationships—such as having the "same first duration" and encoding the "same first portion" of video—as mandated by the claim language.
  • A key legal question will be one of definitional scope: Can the term "streamlet," which is central to the patents, be construed to cover the standardized segment files used in modern ABR protocols like HLS? The outcome of this claim construction dispute will likely be determinative for the infringement analysis across the entire patent portfolio.