Pioneering VOD Firm Wins ‘Patent Constructions’ Lawsuit


A company that considers itself to be one of the pioneers of video-on-demand technology has claimed a small victory in its fight against AT&T, DirecTV, Dish Network and Amazon for copyright infringement of four patents covering streaming media innovations specifically tied to VOD services using the set top box and mobile app technology.

The Austin Division of United States District Court for the Western District of Texas has ordered that the patent constructions of Broadband iTV Inc. (BBiTV), as defined patent infringement lawsuits filed against the four video streaming giants, “will stand and are final.”

It’s a win for BBiTV in the sense that it may move forward with its ongoing patent infringement litigation against AT&T, DirecTV, Dish Network and Amazon.

The Defendants in the patent litigation proceedings argued, unsuccessfully, for a narrow interpretation of 19 claims that were challenged.

The Texas federal court also declined all of defendants’ arguments that BBiTV’s patents are invalid as indefinite.

“We are pleased that the infringement litigation will consider the highly relevant totality of this intellectual property as we move forward with the proceedings,” said Feinberg Day Kramer Alberti Lim Tonkovich & Belloli LLP partner Rob Kramer, lead counsel for BBiTV. “This 19-0 victory is an early reinforcement of BBiTV’s vigorous intellectual property defense.”

BBiTV began as an operating company in 2001 in Hawaii and developed and presently owns a portfolio of more than 70 issued patents. The patents are comprised of technologies developed by BBiTV inventor and chief technology officer Milton Diaz.

BBiTV developed the underlying technology that all of its patents were derived from, and BBiTV, says its attorneys at Feinberg Day Kramer, has not acquired any of its patents from third parties.

Amazon, it claims, infringe on these patents; BBiTV filed its patent infringement action against Amazon in October.

This followed a December 2019 action against AT&T, DirecTV and Dish.

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.

BBiTV’s litigious history dates to 2014, when it 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.

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.

— Reporting by Adam Jacobson, with archival reporting by Ethan Hunt