A company that considers itself to be one of the pioneers of video-on-demand technology has filed a patent infringement action against AT&T — an action that involves four patents covering streaming media innovations specifically tied to VOD services using the set top box and mobile app technology.
Two additional lawsuits were filed Thursday morning, of a similar nature to the AT&T suit, against DirecTV and Dish Network. This followed RBR+TVBR‘s Dec. 18 exclusive report.
Broadband iTV, based in Honolulu, made the filing on Monday in U.S. District Court for the Western District of Texas.
The lawsuit addresses AT&T’s infringement of its patents based upon various aspects of AT&T’s U-verse platform.
BBiTV developed and owns a portfolio of more than 60 issued U.S. patents. The patents are comprised of technologies developed by BBiTV inventor and Chief Technology Officer Milton Diaz based on his work over several decades.
According to BBiTV, it developed the underlying technology that all of its patents were derived from; BBiTV has not acquired any of its patents from third parties.
AT&T, and others, infringe on these patents, BBiTV says.
The company is represented by the law firm Feinberg Day Kramer Alberti Lim Tonkovich & Belloli LLP.
“Milton’s inventions have transformed the way millions of consumers around the world watch TV, movies and other content,” said Clifton Kagawa, CEO of BBiTV. “At its core, streaming media technology as we know and love it comes from BBiTV. The use of these patented technologies without a license is not acceptable.”
BBiTV describes itself as “a premier developer of an innovative interactive television and video-on-demand (VOD) intellectual property (IP) portfolio.” It began operations in 2001 in Hawaii, where it launched an interactive community channel enabling members to communicate and interact among themselves, as well as to buy and sell goods and services. BBiTV also developed a web platform allowing content producers, businesses, community organizations and individuals to publish video content directly to the television.
BBiTV has also designed systems for television video personals, video greeting cards, talent contests and promotions, and music videos. These projects became the basis for the beginning of BBiTV’s patent portfolio.
BBiTV launched PROMO! in partnership with Oceanic Time Warner Cable (now Charter), which was the nation’s first interactive cable channel featuring long form videos on local and national products and services in 2003. BBiTV continued its partnership with the former Oceanic Time Warner Cable franchise and launched the “TVClassifieds” application in 2005. The company was also a consultant on other Oceanic Time Warner Cable applications in 2005 and 2006.
At that time, BBiTV shifted its entire focus to IP development and licensing.
This was fueled by Diaz’s efforts as the inventor behind BBiTV’s patent portfolio.
Before joining BBiTV, Diaz was known for his tenure from 1998-2002 as SVP/Engineering and Network at the former StarMedia Network, at the time the top operator of community and portal websites in Latin America.
The 51-page complaint specifically relates to U.S. Patent Nos. 10,028,026, 10,349,101, 9,998,791, and 9,648,388.
The ’026 Patent, titled “System for addressing on-demand TV program content on
TV services platform of a digital TV services provider,” was issued on July 17, 2018.
Electronic Program Guides on the “Accused ’026 Patent Products” are presently used by U-Verse subscribers to select VOD content.
The ’101 Patent, titled “System for addressing on-demand TV program content on
TV services platform of a digital TV services provider,” was issued on July 9, 2019.
The “Accused ’101 Patent Products” transmit, from the Internet-connected digital
device to a television service platform, a request by the subscriber to log in to the video-on-demand system. For example, the products allow subscribers to login to access the VOD system. Part of this process includes transmitting a request from the device to the television service platform via the Internet.
The ’791 Patent, titled “Video-on-demand content delivery method for providing
video-on-demand services to TV service subscribers,” was issued on June 12, 2018.
Products using this patented technology provide a method for video-on- demand content delivery for providing VOD services to a plurality of television service subscribers via a television service provider system that comprises a VOD content delivery system having one or more computers. For example, the products use one or more computers including the Comcast Technology Solutions, formerly known as Comcast Media Center, as a web-based Content Management System and Distribution Service for VOD content delivery.
The ’388 Patent, titled “Video-on-demand content delivery system for providing
video-on-demand services to TV services subscribers,” was issued on May 9, 2017.
Patents used by AT&T, BBiTV says, include a set top box providing video-on-demand services and operatively connected to TV equipment of a TV service subscriber.
“AT&T’s acts of direct and indirect infringement have caused and continue to cause damage to BBiTV and BBiTV is entitled to recover damages sustained as a result of AT&T’s wrongful acts in an amount that is proven at trial,” the complaint states.
AT&T has not commented on the case.
However, it is not the first case involving Broadband ITV to find its way into federal court.
BBiTV in 2014 filed cases against Hawaiian Telecom and Oceanic Time Warner Cable. In 2015, new litigation against Hawaiian Telecom was filed, this time in Pennsylvania Eastern District Court. This went to a Federal Appeals Court, which in September 2016 upheld a ruling found in favor of Hawaiian Telecom.
BBiTV in April 2017 then took its Hawaiian Telecom case to the Supreme Court. A month later, the justices declined to hear the case.
Given the failure of BBiTV to win those patent infringement cases, it could face a difficult legal battle against AT&T.
