On Friday, April 14, 2017, Digital Stream IP, LLC filed two
separate complaints in federal court in the Eastern District of
Texas against CBS Radio Inc. and iHeartMedia, Inc., alleging
infringement of U.S. Patent No. 6,757,913 ("the '913
The '913 patent is directed to sending digital audio signals
from a transmitter to a receiver or tuner, which can display, for
example, song titles and artists along with playing the
corresponding audio. This, of course, sounds routine in this age of
ubiquitous digital radio, but the asserted patent claims a history
going back to an original patent application filed July 15, 1996.
Due to patent term extensions granted due to delays in patent
office processing, the '913 patent is set to expire on July 5,
In the complaints, Digital Stream alleges that the '913
patent reflects an "improvement in digital audio" devices
and systems and "solve[s] the problems of limited range,
signal strength, variety of channels, program information available
and overall accessibility and ease of use."
The '913 patent has considerable and ongoing litigation
history. In 2016, Digital Stream first targeted the automotive
industry in suits against General Motors, Honda, Nissan, BMW, and
Mercedes-Benz. Digital Stream also asserted the '913 patent in
suits against Best Buy and Robert Bosch. Many of these cases
were dismissed in the preliminary stages based on settlement.
However, Unified Patents, a company self-dubbed the
"Anti-Troll" and dedicated to challenging patents
asserted on a mass scale, filed a petition for inter
partes review (IPR) before the Patent Trial and Appeal Board
(PTAB) in September 2016, asking that certain claims of the
'913 patent be found invalid over various prior art
On March 14, 2017, the PTAB agreed with Unified Patents'
positions and instituted a review of the '913 patent, finding a
reasonable likelihood that one or more of the challenged claims
would be found unpatentable (invalid). A final decision,
which will issue no later than March 14, 2018, will decide the fate
of the challenged '913 patent claims. Mercedes-Benz filed
its own IPR petition in February of this year challenging a
different set of claims, and the PTAB will decide whether to
institute this challenge of within the next few months. In
the meantime, Digital Stream appears to have turned its attention
onto the radio industry.
The lawsuits allege that CBS Radio and iHeartMedia are
infringing at least claim 31 of the '913 patent by broadcasting
their hybrid digital/analog HD Radio stations. Interestingly, claim
31 is one of the few claims not challenged in the
two pending IPR proceedings – although it appears to of a
similar scope as those under PTAB review. Digital Stream
specifically points to several HD Radio stations broadcast in
Texas, including CBS Radio's 105.3 The Fan, KRLD 1080AM, and
Cowboys Radio 24/7, and iHeartMedia's LoneStar 92.5, KERA HD1
and KERA HD2. Digital Stream is seeking monetary damages and
a finding that the case is exceptional, which would entitle it to
attorneys' fees under 35 U.S.C. § 285.
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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