IP Law Daily, PATENT—S.D.N.Y.: Streaming video patents invalid for being directed at an abstract idea, (Mar 27, 2023)

By Kevin M. Finson, J.D.

Patents directed at allowing easy fast forwarding and rewinding of streaming video were invalid because they merely implemented abstract ideas about transmission of information using generic computer components.

Two patent claims directed to fast-forwarding, rewinding, and similar display modes of streaming video were invalid as abstract, the U.S. District Court in New York has held. The claims merely transmitted information using generic computer components (Diatek Licensing LLC v. AccuWeather, Inc., March 24, 2023, Cronan, J.).

Diatek Licensing, LLC (Diatek) was the owner of U.S. Patents Nos. 7,079,752 (the ’752 patent) and 8,195,828 (the ’828 patent), both of which were directed at streaming video displayed with what were called “trick modes” such as rewind, fast forward, and freeze frame. The ’752 patent claimed a system for allowing trick modes to operate with scrambled video by unscrambling the video and storing it in an unscrambled, more quickly accessible form than the original scrambled stream. The ’828 patent claimed a method for reducing the bandwidth required to download video by only downloading the frames which would be displayed when a trick mode was in use; for example, when fast forward mode was used only some frames of video would be displayed, and the ’828 patent’s claimed invention was not downloading the frames which would not be displayed. Diatek brought suit against Accuweather, Inc. (Accuweather) for infringement of both patents. Accuweather moved to dismiss, arguing that both patents were invalid for being directed at an abstract idea. The court applied the two-step Alice test.

Abstract idea. Diatek argued that the ’752 patent was directed to overcoming flaws in the existing art because it allowed use of trick modes with scrambled video feeds, which was difficult under the existing art because of the time taken to unscramble the feed, but the court pointed out that the claimed solution to this problem was merely to unscramble the feed and store it in unscrambled form, without any specific technological improvements. The ’828 patent likewise claimed a desired result without a specific means of obtaining the result, and the court held both were directed to patent-ineligible subject matter for that reason.

Inventive concept. The court held that neither patent contained an inventive concept sufficient to save patentability because both merely recited generic, standard, and well-known steps in the field of transmitting audiovisual data. Diatek’s argument and allegations to the contrary were merely conclusory and did not allege any specific facts to support a finding otherwise.

The court granted the motion to dismiss, but allowed leave to amend in the event that Diatek had factual assertions to make which would change the abstract idea analysis.

The Case is No. 1:21-cv-11144-JPC.

Attorneys: Cortney Alexander (Kent & Risley LLC) for Diatek Licensing LLC. Joseph Michael Drayton (Cooley LLP) for AccuWeather, Inc.

Companies: Diatek Licensing LLC; AccuWeather, Inc.

Cases: Patent NewYorkNews