By Andrew Karpan
A company that sold video-on-demand programming for TVs more than a decade ago and later moved to Texas is using its recent licensing deal with Dish to prop up new claims of patent infringement against Comcast, Charter Communications and Altice at the US International Trade Commission.
Broadband iTV Inc. announced its latest round of patent infringement claims in a Monday press release that pointed to its new 76-page complaint, lodged on April 22 at the ITC. The case this time “addresses the cable giants’ infringement of the patents based upon various aspects of their VOD platforms.”
“BBiTV was an operating company selling VOD services, and it developed all of its own patented technologies,” Broadband iTV’s lawyer Rob Kramer of Feinberg Day Kramer Alberti Lim Tonkovich & Belloli LLP told Law360 in an email. Back then, the company was based in Honolulu. The 50th state, he added, was “known at the time in the cable industry as one of the most innovative markets due to its remote island status.”
The company stopped selling those products in 2006, however, and later moved to Austin, around the time when the city became a hotbed for patent litigation after the appointment of Judge Alan Albright to the bench in the US District Court for the Western District of Texas in 2018. A year later, Kramer’s firm began filing Broadband iTV patent lawsuits there against AT&T, DirecTV and Dish.
All of those suits ended in settlements, but not before judges on the Federal Circuit forced Judge Albright to send Broadband iTV’s lawsuit against Dish to a federal court in Colorado, where Dish is based. Less than two months later, the companies reached a settlement that involved a licensing deal for an undisclosed sum.
A little under five months had passed before Broadband iTV’s lawyers headed straight to the ITC, now against Comcast, Charter and Altice. The deal with Dish, Broadband iTV say, gets it in the doors at the small trade court, which is empowered to block imports based on “unfair trade practices” that Section 337 of the Tariff Act says can include patent infringement. Unlike trial courts, ITC judges can’t order companies to pay anything, but only reach legal judgments as to validity of patent cases and issue orders that block imports of those products — if Broadband iTV can show there’s some competition happening in the marketplace between the companies.
Kramer told Law360 that the company has not filed any corresponding patent infringement complaints in federal courts anywhere else in the country against the three companies. Thanks to the Dish deal, Broadband iTV says in its complaint that its patents licensing business now fulfills what is called the ITC’s “domestic industry” requirement.
“The current and continuing significant domestic investments in plant and equipment, significant employment of labor and capital, and substantial investments in the exploitation of the asserted patents [happens] through engineering and research and development by at least complainant’s licensee, Dish Network LLC and its affiliates, which is a US company licensed to practice the asserted patents,” according to Friday’s complaint.
Broadband iTV also used the popularity of Dish’s products to suggest that customers who buy cable products would not be incredibly harmed by any decision that blocks Comcast, Charter or Altice from importing products that allegedly infringe Broadband iTV’s patents — another legal requirement considered unique to the trade court.
“The Dish family of companies offers like or directly competitive products and services that provide consumers with access to television content,” reads the complaint, which noted that “consumers can also access directly competitive television services and content with a Sling TV subscription.”
All told, the Dish brand name and its services were used at least 170 times in Broadband iTV’s complaint against the three other cable companies.
Representatives for any the defendants did not respond to requests for comment.
The patents-at-suit are US Patent Nos. 9,866,909; 10,555,014; 9,936,240; and 11,277,669
Broadband iTV is represented by Robert F. Kramer and Robert C. Mattson of Feinberg Day Kramer Alberti Lim Tonkovich & Belloli LLP.
Counsel for the respondents at the ITC could not be determined Tuesday.
The case is In the Matter of Certain Digital Set-Top Boxes and Systems and Services Including the Same, case number 337-TA-3616, before the U.S. International Trade Commission.
–Additional reporting by Dani Kass. Editing by Adam LoBelia.https://www.law360.com
