Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 1 of 15
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`
`SYNCHVIEW TECHNOLOGIES, LLC,
`
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
` CIVIL ACTION FILE
`
` NO. ___________________
`
`
` Jury Trial Demanded
`
`FUBOTV INC.,
`
`
`
`
`
`
`Defendant.
`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`Plaintiff SynchView Technologies, LLC (“SynchView” or “Plaintiff”) files
`
`this Complaint for Patent Infringement against Defendant Fubo TV Inc. (“Fubo” or
`
`“Defendant”), and states as follows:
`
`THE PARTIES
`Plaintiff is a limited liability company organized and existing under
`
`1.
`
`the laws of the State of Georgia, having its principal office at 4725 Peachtree
`
`Corners Circle, Suite 230, Atlanta, GA 30092.
`
`2.
`
`Defendant is a Delaware corporation with a principal office at 1330
`
`Avenue of the Americas, 7, 9th Floor, New York, New York 10013.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`
`SYNCHVIEW TECHNOLOGIES, LLC,
`
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
` CIVIL ACTION FILE
`
` NO. ___________________
`
`
` Jury Trial Demanded
`
`FUBOTV INC.,
`
`
`
`
`
`
`Defendant.
`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`Plaintiff SynchView Technologies, LLC (“SynchView” or “Plaintiff”) files
`
`this Complaint for Patent Infringement against Defendant Fubo TV Inc. (“Fubo” or
`
`“Defendant”), and states as follows:
`
`THE PARTIES
`Plaintiff is a limited liability company organized and existing under
`
`1.
`
`the laws of the State of Georgia, having its principal office at 4725 Peachtree
`
`Corners Circle, Suite 230, Atlanta, GA 30092.
`
`2.
`
`Defendant is a Delaware corporation with a principal office at 1330
`
`Avenue of the Americas, 7, 9th Floor, New York, New York 10013.
`
`
`
`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 2 of 15
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`JURISDICTION AND VENUE
`This Court has exclusive subject matter jurisdiction over this case
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`3.
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`pursuant to 28 U.S.C. §§ 1331 and 1338(a) on the grounds that this action arises
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`under the Patent Laws of the United States, 35 U.S.C. § 1 et seq., including,
`
`without limitation, 35 U.S.C. §§ 271, 281, 284, and 285.
`
`4.
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`This Court has personal jurisdiction over Defendant on the grounds
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`that Defendant has its principal office in this State. This Court also has personal
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`jurisdiction over Defendant because Defendant has minimum contacts with the
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`State of New York, and has purposefully availed itself of the privileges of
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`conducting business in this State and in this Judicial District. For example, on
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`information and belief, Defendant has offered to sell or rent, and has sold or rented,
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`infringing products or services in the State of New York and in this Judicial
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`District.
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`5.
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`Venue is proper in this Court pursuant to 28 U.S.C. § 1400(b) on the
`
`grounds that Defendant has committed acts of infringement and has a regular and
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`established place of business in this Judicial District.
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`FACTUAL BACKGROUND
`Plaintiff is the owner by assignment of all right, title and interest in
`
`6.
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`and to United States Patent Number 6,788,882 B1, entitled “Systems and Methods
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`2
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 3 of 15
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`for Storing a Plurality of Video Streams on Re-Writable Random-Access Media
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`and Time- and Channel-Based Retrieval Thereof” (“the ’882 Patent”), including
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`the right to sue for all past, present, and future infringement, which assignment was
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`duly recorded in the United States Patent and Trademark Office (“USPTO”).
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`7.
`
`A true and correct copy of the ’882 Patent is attached hereto as
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`Exhibit A. The ʼ882 Patent is incorporated herein by reference.
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`8.
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`The application that became the ’882 Patent was filed on April 17,
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`1998, and was assigned U.S. patent application number 09/062,022 (“the ’022
`
`Application”).
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`9.
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`The ’882 Patent issued on September 7, 2004, after a full and fair
`
`examination by the United States Patent Office.
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`10. The ’882 Patent is valid and enforceable.
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`SUBJECT MATTER OF THE ’882 PATENT
`11. The ’882 Patent recognized that, by the time the ’022 Application was
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`filed in 1998, television viewers wanted to have greater control over their viewing
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`experience: “As viewer habits change and the choice of programming (channels)
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`grows, people want to adapt television programming to their schedule, rather than
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`the other way around.” [’882 Patent 1:20-23].
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`3
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 4 of 15
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`12. Moreover, by the time the ’022 Application was filed in 1998, viewers
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`had grown accustomed to the capability of VCRs to record a program for later
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`viewing. However, VCRs offered limited flexibility in how a user could record
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`programs, advance forward or backward within a program, and “surf” between
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`programs:
`
`The VCR, although extremely successful as a consumer device, has
`limited flexibility when the number of television channels increases.
`Also, the consumer has to remember to program the VCR to record
`the event. Commercially-available VCR+® technology has somewhat
`facilitated the process, but still requires tape management, scheduling
`and remembering when and what to program.
`
`One frequently employed method of viewing television involves
`rapidly browsing (“surfing”) television channels to search for a
`program of interest, to watch several programs at once, or to skip
`ubiquitous commercials. Surfing has become even more popular
`given the advent of cable and satellite television, wherein many
`dozens of channels are available for viewing at any given time. On
`currently available single-screen systems, surfing must be done in real
`time and as time progresses. In other words, a user can watch one
`channel and record another channel on a VCR, but the user cannot
`watch a recorded program and simultaneously record another (unless
`the user is endowed with multiple VCRs).
`
`[’882 Patent at 1:24-48.]
`
`13. The ’882 Patent recognized that these problems required a technical
`
`solution:
`
`Therefore, what is needed in the art is a fundamental increase in the
`flexibility afforded a user in viewing programs aired over multiple channels.
`Moreover, what is needed in the art is a way of harnessing the power of
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`4
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 5 of 15
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`digital computers to give the user more power in determining what he wants
`to watch,” in order to provide “a fundamental increase in the flexibility
`afforded a user in viewing programs aired over multiple channels.
`[’882 Patent at 1:54-60.]
`14. The ’882 Patent provides technical solutions to these and other
`
`deficiencies in the prior art: “To address the above-discussed deficiencies of the
`
`prior art, the present invention provides a digital video recorder (DVR) and a
`
`method of operating the same.” [’882 Patent at 1:63-65.]
`
`15. For example, the ’882 Patent addresses one deficiency in the art by
`
`providing that:
`
`In one embodiment, the DVR includes: (1) a mass data storage unit that concurrently and
`continuously receives and digitally stores a plurality of channels and (2) a channel
`viewer, coupled to the mass data storage unit, that retrieves a portion of one of the
`plurality of channels from the mass data storage unit based on a received command and
`presents the portion on a video display device.
`[’882 Patent at 1:65-2:5.]
`16. As the ’882 Patent explains, this addresses a deficiency in VCR
`
`technology:
`
`The digital video recorder of the present invention remedies the
`shortcomings of traditional video recording methods. The DVR does this by
`combining an essentially limitless (only limited by the cost of the
`equipment) capability concurrently to record a number of channels on a
`random-access medium while being able concurrently to play back any of
`these channels for viewing.
`[’882 Patent at 2:9-16.]
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`5
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 6 of 15
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`17. The specification identifies other technological deficiencies addressed
`
`by the subject matter disclosed and claimed in the ’882 Patent. For example, “In
`
`one embodiment of the present invention, the mass data storage unit stores the
`
`plurality of channels together with time information to allow the plurality of
`
`channels to be synchronized with respect to one another. The time information can
`
`synchronize corresponding portions of the plurality of channels that the DVR
`
`recorded concurrently.” [’882 Patent at 2:63-3:1.] The ’882 patent further
`
`discloses that, in this one embodiment, the synchronization of recorded programs
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`“allows a user to surf synchronized, prerecorded channels in a way that imitates the
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`real-time channel surfing that the prior art constrains the user to do.” ’882 patent
`
`at 3:2-4.
`
`18.
`
`In connection with the Detailed Description of Illustrative
`
`Embodiments, the specification describes that in such embodiments a user’s
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`“surfing” is not limited to browsing back and forth between the point of live
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`broadcast as in prior-art technology. For example, in one embodiment, the user
`
`could browse between stored programs at points in time earlier than the point of
`
`live broadcast: “[I]t is, in principle, possible to support channel surfing at any
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`moment later than the start of the recording process.” ’882 patent at 5:26-28.
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`6
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 7 of 15
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`19. Moreover, the specification discloses that, in one embodiment, a user
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`could navigate through the stored programs between which he is flipping back and
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`forth: “As will be described in greater detail below, the requirements for such a
`
`system also enable ‘catch-up viewing’) (joining a certain program in mid-broadcast
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`and then, through skipping of commercials, catching-up with the real-time
`
`broadcast).” ’882 patent at 5:31-35. Or, as stated elsewhere, “[t]he user can freely
`
`time surf in either time direction. The only time-boundaries are that one cannot
`
`surf past now into the future (on higher time side), and the current time minus the
`
`total recorded time (on the lower time side). Both of these boundaries move with
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`time.” ’882 patent at 5:52-57.
`
`20. Moreover, the specification describes, in connection with one
`
`embodiment, that synchronization allows a user to switch from one channel at a
`
`given time to another channel at a different time:
`
`The approach described below provides for the rapid retrieval of
`variable data rate digital data, such as MPEG II compressed video. It
`also provides synchronization of the data streams, to allow rapid
`switching from one channel at a given time to another channel at a
`different time. This feature is advantageous in supporting channel
`surfing in the past (recorded video).
`’882 patent at 14:40-46.
`21. The independent claims of the ’882 Patent address technological
`
`deficiencies of the prior art such as those described above.
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`7
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 8 of 15
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`22. Claim 1 of the ’882 Patent claims:
`
`1. A digital video recorder (DVR) for recording a plurality of
`television broadcast programs, comprising:
`a mass data storage unit that concurrently and continuously receives
`and digitally stores a plurality of television broadcast programs
`together with time information to allow said plurality of stored
`television broadcast programs to be synchronized with respect to one
`another; and
`a channel viewer, coupled to said mass storage unit, that retrieves a
`portion of one of said plurality of stored television broadcast programs
`from said mass data storage unit based on a received command and
`presents said portion on a video display device.
`23. Claim 19 claims:
`
`19. A method of operating a digital video recorder, comprising the steps of:
`receiving a plurality of television broadcasts, each television broadcast
`including a video signal; and
`concurrently and continuously digitally storing said plurality of television
`broadcasts on a mass data storage unit and storing said plurality of television
`broadcasts together with time information to allow said plurality of stored
`television broadcasts to be synchronized with respect to one another upon
`replay of said stored television broadcasts.
`24. The independent claims of the ʼ882 patent recite technical solutions to
`
`technical problems, including, with respect to claim 1, a “digital video recorder . . .
`
`comprising: a mass data storage unit that concurrently and continuously receives
`
`and digitally stores a plurality of television broadcast programs together with time
`
`information to allow said plurality of stored television broadcast programs to be
`
`synchronized with respect to one another” and, with respect to claim 19, a “method
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`8
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 9 of 15
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`of operating a digital video recorder, comprising the steps of . . . concurrently and
`
`continuously digitally storing said plurality of television broadcasts on a mass data
`
`storage unit and storing said plurality of television broadcasts together with time
`
`information to allow said plurality of stored television broadcasts to be
`
`synchronized with respect to one another upon replay of said stored television
`
`broadcasts.” These claim elements were not well-understood, routine, or
`
`conventional when the inventors of the ʼ882 Patent filed their patent application.
`
`25. The subject matter disclosed and claimed in the ’882 Patent provides
`
`solutions to other deficiencies in the art, as well.
`
`26. For example, the ’882 Patent discloses that in one embodiment, “the
`
`mass data storage unit stores the plurality of channels on a first-in first-out basis.”
`
`[’882 Patent at 2:44-45.] This addresses a technological limitation regarding the
`
`volume of content that can be stored. Claim 2 of the ’882 Patent also addresses
`
`this deficiency in the prior art.
`
`27.
`
`In another example, the ’882 Patent discloses that “[i]n one
`
`embodiment of the present invention, the mass data storage unit stores the plurality
`
`of channels in separate files based on channel and timeslot identification.” [’882
`
`Patent at 2:53-55.] This addresses a technological limitation of prior-art VCR
`
`9
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 10 of 15
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`technology regarding tape management and accessing recorded content. Claim 3
`
`of the ’882 Patent addresses this deficiency in the prior art.
`
`28.
`
`In yet another example, the ’882 Patent discloses that “[i]n one
`
`embodiment of the present invention, the channel viewer comprises a channel
`
`guide database containing pointers to locations in the mass data storage unit.” The
`
`’882 Patent states that this “allows individual programs to be selected efficiently.”
`
`[’882 Patent at 3:9-10.]
`
`29. Similarly, the ’882 Patent states that “[i]n a more specific
`
`embodiment, the channel guide contains links to locations in the mass data storage
`
`unit. The links may be hypertext links, wherein a user can initiate a retrieval and
`
`presentation of a particular portion of a selected channel simply by clicking on a
`
`particular location in the channel guide.” [’882 Patent at 3:5-8, 14-19.]
`
`30. Various claims of the ’882 Patent address this deficiency in the prior
`
`art regarding the efficiency of selecting programs, including programs being stored
`
`on the DVR (e.g., claims 5, 7, 20, and 22).
`
`31. The subject matter disclosed in the ’882 Patent also addresses the
`
`deficiency in prior-art technology relating to advancing or rewinding through
`
`programs. For example, the ’882 Patent describes harnessing the power of digital
`
`computers to provide the user more flexibility in advancing through programs:
`
`10
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 11 of 15
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`In one embodiment of the present invention, the channel viewer presents the portion
`nonlinearly. Sections of the portion may therefore be skipped, repeated, reversed,
`randomized or presented at a rate that differs from real-time. In an embodiment to be
`illustrated and described, commercials or other tedious content may be skipped to
`advantage. This gives rise to viewing concepts, such as “catch-up viewing” as described
`hereinafter.
`[’882 Patent at 3:31-38.]
`32. The ’882 Patent further discloses that “[i]n one embodiment of the
`
`present invention, the DVR selectively moves by one commercial time unit (CTU)
`
`within the one of the plurality of channels in response to the received command.
`
`The DVR can move forward or backward. In a more specific embodiment, the
`
`received command is employable to achieve catch-up viewing.” [’882 Patent at
`
`4:16-21.]
`
`33. These technological improvements to the prior art providing greater
`
`flexibility in advancing through a television program are reflected in various
`
`claims of the ’882 Patent, including claims 9, 17, 18, 24, 32, and 33.
`
`34. The subject matter disclosed in the ’882 Patent also addresses a
`
`technological limitation relating to the volume of content that may be stored on a
`
`DVR. For example, the ’882 Patent discloses that “[i]n one embodiment of the
`
`present invention, the mass data storage unit receives, digitally compresses and
`
`digitally stores the plurality of channels.” [’882 Patent at 3:39-43.] This
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`technological problem with the prior art is also addressed in the claims of the ’882
`
`Patent, including claims 10 and 25.
`
`11
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 12 of 15
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`35. Plaintiff notified Defendant of its infringement prior to filing suit but
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`has received no response.
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`COUNT I – DIRECT PATENT INFRINGEMENT
`36. Plaintiff realleges and incorporates by reference the allegations set
`
`forth above, as if set forth verbatim herein.
`
`37. Defendant has provided infringing digital video recorders under its
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`Fubo TV and Cloud DVR Plus brands.
`
`38. Defendant has directly infringed the ’882 Patent in violation of 35
`
`U.S.C. § 271(a) by making, importing, using, selling, or offering for sale in the
`
`United States products that embody the patented invention, including at least
`
`claims 1, 5-9, 12, 13, 16-24, 27, 28, and 31-33.
`
`39. Defendant’s infringing Accused Products include, without limitation,
`
`its Fubo TV with Cloud DVR Plus.
`
`40. The Accused Products satisfy each and every element of each asserted
`
`claim of the ’882 Patent, as detailed in the preliminary claim chart attached hereto
`
`as Exhibit B and incorporated herein by reference, either literally or under the
`
`doctrine of equivalents.
`
`41. Defendant conditions the receipt of benefits from using the Accused
`
`Products for which its customers have paid upon the use of the DVR recited in
`
`12
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 13 of 15
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`claims 1, 5-9, 12, 13, 16-18, as well as performance of the steps of the methods
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`recited in at least claims 19-24, 27, 28, and 31-33 of the ’882 Patent.
`
`42. For example, Defendant not only instructs its customers to use the
`
`Accused Products in an infringing manner, but if its customers want to obtain the
`
`benefits of the Accused Products for which they are paying, they must necessarily
`
`operate the Accused Products in an infringing manner due to the design of the
`
`Accused Products.
`
`43. Therefore, the acts of Defendant’s customers in using the DVR recited
`
`in claims 1, 5-9, 12, 13, 16-18, as well as in performing the steps of at least method
`
`claims 19-24, 27, 28, and 31-33 of the ’882 Patent, are attributable to Defendant.
`
`44. Defendant’s infringing activities are and have been without authority
`
`or license under the ’882 Patent.
`
`45. Defendant has had actual knowledge of the ’882 Patent and Plaintiff’s
`
`claims of infringement prior to the filing of this action.
`
`46. Plaintiff is entitled to recover from Defendant the damages sustained
`
`by Plaintiff as a result of Defendant’s infringing acts in an amount subject to proof
`
`at trial, which, by law, cannot be less than a reasonable royalty, together with
`
`interest and costs as fixed by this Court, pursuant to 35 U.S.C. § 284.
`
`13
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 14 of 15
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`JURY DEMAND
`47. Plaintiff hereby demands a trial by jury of all issues so triable
`
`pursuant to Fed. R. Civ. P. 38.
`
`PRAYER FOR RELIEF
`Plaintiff respectfully requests that the Court find in its favor and against
`
`
`
`Defendant, and that the Court grant Plaintiff the following relief:
`
`A. An adjudication that one or more claims of the ’882 patent have been
`
`infringed, either literally and/or under the doctrine of equivalents, by
`
`Defendant;
`
`B. An accounting and an award to Plaintiff of damages adequate to
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`compensate Plaintiff for the Defendant’s acts of infringement,
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`together with pre-judgment and post-judgment interest and costs
`
`pursuant to 35 U.S.C. § 284;
`
`C.
`
`That this Court declare this to be an exceptional case and award
`
`Plaintiff its reasonable attorneys’ fees and expenses in accordance
`
`with 35 U.S.C. § 285; and
`
`D. Any further relief that this Court deems just and proper.
`
`
`
`This 10th day of April, 2020.
`
`14
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`Case 1:20-cv-02970 Document 1 Filed 04/10/20 Page 15 of 15
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`
`
`
`
`/s/ Cortney S. Alexander
`Daniel A. Kent
`(pro hac vice application to be filed)
` dankent@kentrisley.com
`Tel: (404) 585-4214
`Fax: (404) 829-2412
`Cortney S. Alexander
`(pro hac vice application pending)
`cortneyalexander@kentrisley.com
`Tel: (404) 855-3867
`Fax: (770) 462-3299
`KENT & RISLEY LLC
`5755 N Point Pkwy Ste 57
`Alpharetta, GA 30022
`
`Attorneys for Plaintiff
`
`
`
`15
`
`
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