Key Points
- Dish has filed an appeal with the Court of Appeal for the Federal Circuit after the USPTO voided elements of its adaptive bitrate patent.
- The USPTO board’s decision, issued earlier this year, said the affected elements were covered by prior inventions and documented ideas.
- The issue could upend a number of patent-related lawsuits filed by Dish against companies like Fubo, Vidgo and Aylo over the past few years.
Echostar’s Dish Technologies has appealed an unfavorable ruling by the U.S. Patent and Trademark Office’s (USPTO) appeal board that effectively voided one of its key patents at the center of a number of lawsuits against rival streaming companies, The Desk has learned.
The appeal comes several months after regulators at the patent office issued a mixed ruling related to Patent Number 10496554-B2, which involves technology that allows a streaming video connect to adjust the quality of its feed based on a user’s connection speed or other factors at hand.
The technique has become a common feature among the largest streaming video services in the marketplace. In recent years, Dish has sued a number of companies for not licensing the technology before deploying it in their products. Among the legal defendants are cable alternatives Fubo and Vidgo, which compete against Dish’s own Sling TV, and other companies and services like Britbox, Beacbhody and RedTube owner Aylo Freesites.
While some companies have chosen to settle their cases, others challenged whether Dish’s adaptive bitrate patents were validly issued. Earlier this year, The Desk first reported Fubo and Aylo had presented a unified front in their fight against Dish, requesting the USPTO’s Patent Trial and Appeal Board examine the issue to see if the patents were correctly awarded.
The patent board sided against Dish earlier this year, according to records reviewed by The Desk, finding 14 specific claims made in the patent were pre-empted by inventions or techniques first made public by others, including Robert Ogden in 2000 and Geoff Allen in 2002. Ogen’s invention, awarded Patent Number 6161137, specifically covers a video system that adjusts its bitrate based on network performance, while Allen’s technique describes video files using multiple bitrates across delivery points.
In its early finding, the patent board determined that the Ogden and Allen techniques described the very techniques covered by the Dish patent in question, which was awarded in 2005. Based on the techniques described by Ogden and Allen, the patent board found Dish could not properly justify 14 elements of the patent at issue.
The board also determined Dish failed to prove a nexus between the patented invention in question and the commercial success of Fubo, Aylo and other defendants in that specific issue. It upheld other elements of the patent, rejecting challenges from defendants that the entire technique was covered by other inventions or otherwise couldn’t be justified.
Dish appealed the matter twice. Its first appeal, to the USPTO Director Review, was rejected in August. Its supplemental request for a rehearing on the entire case was denied in early October. Dish filed its notice to appeal the matter to the Court of Appeal for the Federal Circuit in mid-October.
In its court filing, Dish says the USPTO misapplied parts of the law, and misconstrued others. Specifically, Dish argues that the patent board wrongly determined that the 14 problematic elements of its adaptive bitrate patent violated the “law of obviousness,” which says a patent can retroactively be stripped of legal protection if it is proven that another inventor of similar skill documented the same idea before a patent application was filed.
Dish also argues that the patent board improperly combined the descriptions offered by Ogden and Allen in their inventions or techniques to conclude that, as a whole, other people had the same idea covered by Dish’s adaptive bitrate patent.
The USPTO is required to file a certified list of its complete administrative record within 40 days of the notice of appeal. A spokesperson for Echostar did not respond to a request for comment.
If the patent board’s decision is upheld, it could upend a number of legal battles that Dish provoked. Other patents held by Dish on the same technology may face similar challenges, and it could significantly disrupt ongoing litigation against Aylo, Vidgo and other companies accused of using the technology.
