DCT

2:23-cv-00553

DISH Tech LLC v. WebGroup Czech Republic As

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00553, D. Utah, 08/22/2023
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants are foreign entities with no principal place of business in the United States, have committed acts of infringement in Utah, purposefully direct their services to the United States, and contract with U.S.-based Content Distribution Networks (CDNs) to serve content to customers in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s adult-oriented video streaming websites, XVideos and XNXX, infringe six patents related to adaptive bitrate (ABR) streaming technology.
  • Technical Context: Adaptive bitrate streaming is a foundational technology for delivering high-quality video over the internet, allowing a client device to dynamically request video segments of varying quality based on real-time network conditions.
  • Key Procedural History: The complaint alleges that two of the asserted patents, the ’564 and ’554 Patents, were previously found to be infringed and not invalid in an International Trade Commission (ITC) action against different respondents. The complaint also asserts that Defendants had actual notice of the asserted patents via communications sent on March 17, 2023.

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 Plaintiff sends communications to Defendant identifying Asserted Patents
2023-06-13 U.S. Patent No. 11,677,798 Issues
2023-08-22 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

  • Patent Identification: 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 describes the state of internet video prior to the invention, where users faced a choice between slow, full-file downloads and low-quality, unreliable streaming that was prone to buffering and network congestion (Compl. ¶42; ’554 Patent, col. 2:1-10). The inventors sought a solution to alleviate the "problems of reliability, efficiency, and latency" in existing streaming systems (’554 Patent, col. 2:59-61).
  • The Patented Solution: The invention proposes a system where a video file is segmented into small, sequential pieces called "streamlets" (Compl. ¶45). These streamlets are encoded at multiple different bitrates (e.g., low, medium, high quality) but are aligned by start time and duration (Compl. ¶47). A client device, rather than the server, monitors network performance and intelligently requests the next streamlet at the optimal quality level it can support, allowing it to seamlessly shift between bitrates to maintain continuous playback (’554 Patent, Abstract; Compl. ¶48).
  • Technical Importance: This client-driven, HTTP-based approach enabled high-quality streaming comparable to cable or satellite by adapting to fluctuating internet bandwidth, a significant improvement over prior server-driven or unreliable streaming methods (Compl. ¶43).

Key Claims at a Glance

  • The complaint asserts at least independent claim 16 (Compl. ¶60).
  • Essential elements of claim 16 include:
    • An end user station for streaming live video.
    • A processor executing instructions to:
    • Establish a network connection to a server holding groups of "streamlets."
    • Where the video is encoded into a plurality of streams (low, medium, high quality), each comprising streamlets corresponding to a portion of the video.
    • Where the first streamlets of each quality stream have equal duration and encode the same portion of the video at different bitrates.
    • The end user station selects a specific quality stream based on its own determination to select a higher or lower bitrate.
    • The end user station places a request for the first streamlet of the selected stream.
    • The end user station receives the requested streamlet and provides it for playback.

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

  • Patent Identification: 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: As part of the same patent family, this patent addresses the same fundamental problems of unreliable and poor-quality internet streaming that existed prior to the development of robust ABR technology (Compl. ¶42).
  • The Patented Solution: The patent claims a system for adaptive-rate streaming. The solution involves storing digital content that has been encoded into multiple streams at different bitrates (e.g., first, second, and third bitrate streams) (Compl. ¶87). Each stream is composed of a group of "streamlets." Crucially, the first streamlet in each quality group has the same duration and encodes the same initial temporal portion of the content, allowing a client device to seamlessly switch between them (Compl. ¶87).
  • Technical Importance: This system architecture enables the core functionality of ABR, allowing content to be delivered reliably over standard internet protocols at the highest possible quality a user's connection can sustain at any given moment (Compl. ¶45).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶87).
  • Essential elements of claim 1 include:
    • A system for adaptive-rate content streaming.
    • At least one storage device storing digital content.
    • The content is encoded at a plurality of different bit rates, creating a plurality of streams (first, second, third).
    • Each stream comprises a group of streamlets, and each streamlet corresponds to a portion of the digital content.
    • The first streamlet of each group has the same duration and encodes the same first temporal portion of the content, but at different bit rates.

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

  • Patent Identification: U.S. Patent No. 9,407,564, "Apparatus, system, and method for adaptive-rate shifting of streaming content," issued August 2, 2016 (Compl. ¶36).
  • Technology Synopsis: This patent claims a method performed by an end-user station for presenting rate-adaptive streams. The method involves the client's media player making successive determinations to shift playback quality by repeatedly generating a factor indicative of network performance and requesting video files from higher or lower quality copies stored on a server (Compl. ¶113).
  • Asserted Claims: At least independent claim 8 (Compl. ¶113).
  • Accused Features: The Accused Streaming Services are alleged to infringe by adapting requests for video segments based on network connection quality (Compl. ¶114).

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

  • Patent Identification: U.S. Patent No. 10,951,680, "Apparatus, system, and method for multi-bitrate content streaming," issued March 16, 2021 (Compl. ¶37).
  • Technology Synopsis: This patent claims a server-side process for streaming video. The process involves storing one or more "virtual timelines" that correspond to the multiple quality streams, receiving a request from an end-user station based on that station's determination to select a bitrate, and sending the requested timeline/streamlet to the user (Compl. ¶140).
  • Asserted Claims: At least independent claim 22 (Compl. ¶140).
  • Accused Features: The servers of the Accused Streaming Services are alleged to infringe by storing virtual timelines and providing retrieved video segments of varying quality based on a determination made by the end-user station (Compl. ¶141).

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

  • Patent Identification: U.S. Patent No. 8,868,772, "Apparatus, system, and method for multi-bitrate content streaming," issued October 21, 2014 (Compl. ¶38).
  • Technology Synopsis: This patent claims a method for presenting rate-adaptive streams, executed by a media player on an end-user station. The method involves automatically requesting subsequent portions of a video by repeatedly generating factors indicative of network performance and making determinations to shift playback quality to achieve continuous playback (Compl. ¶167).
  • Asserted Claims: At least independent claim 1 (Compl. ¶167).
  • Accused Features: The Accused Streaming Services are alleged to infringe by adapting requests for sequential segments based on network connection quality (Compl. ¶168).

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

  • Patent Identification: U.S. Patent No. 11,470,138, "Apparatus, system, and method for multi-bitrate content streaming," issued October 11, 2022 (Compl. ¶39).
  • Technology Synopsis: This patent claims an end-user station comprising a processor and memory with instructions to stream video. The instructions cause the processor to select a specific quality stream based on a determination made by the end-user station to use a higher or lower bitrate version, and then to request and play back the corresponding streamlet (Compl. ¶196).
  • Asserted Claims: At least independent claim 14 (Compl. ¶196).
  • Accused Features: The Accused Streaming Services are alleged to comprise a system for streaming video segments that adapts requests based on network quality (Compl. ¶197).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the "Accused Streaming Services," which include at least the adult-content websites XVideos.com and XNXX.com (Compl. ¶¶4-6).

Functionality and Market Context

The Accused Streaming Services allegedly provide both live and on-demand video to users in the United States using the HTTP Live Streaming ("HLS") protocol (Compl. ¶¶57, 62). Functionally, these services are alleged to receive segments of a selected video program and "adapt requests for segments from a set of segments with the same content but varying quality based upon the quality of the network connection" (Compl. ¶61). To facilitate delivery to U.S. users, Defendants allegedly contract with U.S.-based Content Distribution Networks (CDNs), such as CDN77, and select U.S.-based datacenters to store and serve content (Compl. ¶¶22, 24). The complaint alleges that XVideos and XNXX are among the most visited websites for their content category in the United States (Compl. ¶29).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that are not provided. The narrative infringement theories are summarized below.

'554 Patent Infringement Allegations

The complaint alleges that the Accused Streaming Services infringe at least claim 16 of the ’554 Patent (Compl. ¶60). The core of the allegation is that when a user in the United States accesses these services, their end-user device (e.g., a computer or mobile device) performs the claimed method. Specifically, the services are alleged to provide live video encoded at multiple bitrates as groups of streamlets. The user's device allegedly makes a determination to select a higher or lower bitrate stream based on network quality and then requests, receives, and plays back the appropriate video segment, thereby practicing each step of the asserted claim (Compl. ¶¶61-62).

'798 Patent Infringement Allegations

The complaint alleges that the Accused Streaming Services directly infringe at least claim 1 of the ’798 Patent (Compl. ¶87). This claim is directed to a system. The complaint alleges that the Defendants' services, which provide video segments to end-user stations, constitute this system. The infringement theory posits that the Defendants' servers act as the "storage device" storing digital content encoded into multiple streams (e.g., different quality levels), where the video is segmented into streamlets that are temporally aligned across the different quality streams, thus meeting the claim limitations (Compl. ¶87).

Identified Points of Contention

  • Scope Questions: A central question may be whether the term "streamlet," as used in the patents, can be construed to read on the standardized segments used in protocols like HLS, which the complaint alleges Defendants use (Compl. ¶57). The dispute may focus on whether "streamlet" implies proprietary structures or metadata not present in standard HLS segments.
  • Technical Questions: For claims directed to an "end user station" (e.g., Claim 16 of the ’554 Patent), a key factual question will be what level of control the client device actually exercises. What evidence shows that the "end user station" itself makes the "determination to select a higher or lower bitrate version," as opposed to this decision being dictated or heavily controlled by server-side logic or CDN behavior? The complaint's general allegation that the services "adapt requests... based upon the quality of the network connection" may not be specific enough to resolve this point (Compl. ¶61).

V. Key Claim Terms for Construction

  • The Term: "streamlet"

  • Context and Importance: This term is foundational to the claimed inventions and appears across the asserted patents. Its construction is critical because if defined narrowly to include specific proprietary formatting, it may not cover the standardized HLS segments allegedly used by Defendants. Practitioners may focus on this term because its scope could be dispositive of infringement.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification of the parent patent family provides a broad definition, stating "streamlet refers to any sized portion of the content file 200" (’554 Patent, col. 7:39-41).
    • Evidence for a Narrower Interpretation: The same specification also describes a streamlet as being "encapsulated as an independent media object" and having a "unique time index," which could imply structural requirements beyond a simple "portion" of a file (’554 Patent, col. 7:42-46).

  • The Term: "a determination by the end user station" (from ’554 Patent, cl. 16)

  • Context and Importance: This phrase captures the client-driven nature of the invention, which the complaint highlights as a "revolutionary improvement" (Compl. ¶48). The dispute will likely center on whether the accused HLS system truly embodies a "determination by the end user station" or if the decision logic resides elsewhere (e.g., on the server or CDN), thus avoiding infringement.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent's description of the client "continuously observ[ing] the quality of a user's network connection and adjust[ing] the requested quality" supports a functional interpretation where the client's role is primary (Compl. ¶45).
    • Evidence for a Narrower Interpretation: The patent discloses a specific algorithm for making this determination, involving calculating a "performance factor" based on streamlet receive times and comparing it to thresholds (’554 Patent, col. 17:1-49; Fig. 10). A defendant may argue that the claimed "determination" should be construed to require this specific method or a structural equivalent.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is based on allegations that Defendants encourage infringement by providing and promoting the Accused Streaming Services to U.S. customers (e.g., Compl. ¶¶68, 70). Contributory infringement is based on the allegation that the Accused Streaming Services are a material part of the invention, are not a staple article of commerce, and are known by Defendants to be especially adapted for infringement (e.g., Compl. ¶78).
  • Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges pre-suit knowledge on the basis that Defendants, as providers in a "small and well-defined market," knew or should have known of DISH's foundational ABR patent portfolio (e.g., Compl. ¶72). It further alleges actual, post-suit knowledge based on communications sent to Defendant WGCZ on March 17, 2023, after which Defendants allegedly continued their infringing conduct (Compl. ¶¶58, 63, 73-74).

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

  • A key evidentiary question will be one of technical implementation: does the accused HLS-based streaming system function as claimed? Specifically, can Plaintiff produce evidence that the client-side software on an end-user's device independently performs the "determination" to switch bitrates, or is that decision fundamentally controlled by the server or CDN infrastructure in a manner outside the patent claims?
  • A core issue will be one of definitional scope: can the term "streamlet," which originated with the inventors, be construed broadly enough to encompass standardized segments used in modern, widely adopted protocols like HLS, or is it limited by the specification to a more specific data structure?
  • A significant legal and factual question will be knowledge and intent: particularly for conduct prior to the March 2023 notice letter, can Plaintiff prove that the foreign-based Defendants possessed the requisite knowledge of the patents and specific intent to cause infringement within the United States to support claims of willful and indirect infringement?