Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 1 of 17
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`
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`David S. Bloch (SBN: 184530)
`dbloch@winston.com
`WINSTON & STRAWN LLP
`101 California Street
`San Francisco, CA 94111-5840
`Telephone:
`(415) 591-1000
`Facsimile:
`(415) 591-1400
`
`Michael Brody (Pro Hac Vice to be submitted)
`mbrody@winston.com
`WINSTON & STRAWN LLP
`275 Middlefield Rd., Suite 205
`Menlo Park, CA 94025
`Telephone:
`(650) 858-6500
`Facsimile:
`(650) 858-6550
`
`Krishnan Padmanabhan (Pro Hac Vice to be submitted)
`kpadmanabhan@winston.com
`WINSTON & STRAWN LLP
`200 Park Avenue
`New York, NY 10166-4193
`Telephone:
`(212) 294-6700
`Facsimile:
`(212) 294-4700
`
`Joshua L. Collins (Pro Hac Vice to be submitted)
`jlcollins@winston.com
`WINSTON & STRAWN LLP
`1111 Louisiana, 25th Floor
`Houston, TX 77002-5242
`Telephone:
`(713) 651-2600
`Facsimile:
`(713) 651-2700
`
`Attorneys for Plaintiff
`TIME WARNER CABLE INC.
`
`
`
`
`
`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`
`
`TIME WARNER CABLE INC.,
`
`Case No. 3:16-cv-02433
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`
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`TIME WARNER CABLE INC.’S
`COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`DEMAND FOR JURY TRIAL
`
`
`
`Plaintiff,
`
`v.
`
`
`OPENTV, INC., NAGRAVISION SA, and
`KUDELSKI SA,
`
`
`
`Defendants.
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`TIME WARNER CABLE INC.’S COMPLAINT FOR DECLARATORY JUDGMENT
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`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 2 of 17
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`Plaintiff Time Warner Cable Inc. (“TWC”), for its Complaint for Declaratory Judgment
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`against Defendants OpenTV, Inc. (“OpenTV”), Nagravision SA (“Nagravision”), and Kudelski SA
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`(“Kudelski”) (each a “Defendant” and collectively, “Defendants”), alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for declaratory judgment under the Declaratory Judgment Act, 28
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`U.S.C. § 2201 et seq., and the Patent Laws of the United States, 35 U.S.C. § 1 et seq. TWC seeks a
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`declaration of non-infringement for each of United States Patent Nos. 5,907,322 (the “’322 Patent”),
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`6,530,082 (the “’082 Patent”), 6,678,463 (the “’463 Patent”), 6,895,595 (the “’595 Patent”)
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`6,985,586 (the “’586 Patent”), 7,055,169 (the “’169 Patent”), 7,243,139 (the “’139 Patent”),
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`7,536,704 (the “’704 Patent”) and 7,669,212 (the “’212 Patent”). Taken together, the foregoing
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`patents are referred to herein as the “Patents-in-Suit.”
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`THE PARTIES
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`2.
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`TWC is a company organized and existing under the laws of Delaware with its
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`principal place of business at 60 Columbus Circle, New York, New York 10023.
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`3.
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`OpenTV is a corporation organized and existing under the laws of Delaware with its
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`principal place of business at 275 Sacramento Street, San Francisco, California 94111. Upon
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`information and belief, OpenTV is, directly or indirectly, a wholly owned subsidiary of Kudelski.
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`4.
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`Upon information and belief, Nagravision is a Swiss company with a principal place
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`of business at Route de Genève 22, 1033 Cheseaux-sur-Lausanne, Switzerland. Upon information
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`and belief, Nagravision is, directly or indirectly, a wholly owned subsidiary of Kudelski.
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`5.
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`Upon information and belief, Kudelski is a Swiss company with a principal place of
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`business at Route de Genève 22, 1033 Cheseaux-sur-Lausanne, Switzerland.
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`JURISDICTION AND VENUE
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`6.
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`This action arises under the Patent Laws of the United States of America, 35 U.S.C.
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`§ 1 et seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq. This Court has subject
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`matter jurisdiction over the action under 28 U.S.C. §§ 1331 and 1338, based on the existence of an
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`actual controversy between TWC, on the one hand, and Defendants, on the other hand, for claims
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`under the Patent Laws. In particular, there is an active case or controversy about whether or not
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`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 3 of 17
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`TWC infringes any claims of each of the Patents-in-Suit. The existence of this controversy is
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`demonstrated by, for example, Defendants’ meetings with representatives of TWC on January 8,
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`2016, March 22, 2016, and April 26, 2016, during which Defendants alleged infringement of each of
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`the Patents-in-Suit in an attempt to force TWC to license its patent portfolio and threatened litigation
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`if a license was not agreed upon. See Exhibit A (Jan. 14, 2016 correspondence); Exhibit B (Mar. 22,
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`2016 correspondence); Exhibit C (Apr. 12, 2016 correspondence). On information and belief, all of
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`the Patents-in-Suit are owned by Kudelski subsidiary OpenTV, with the exception of the ’586
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`Patent, which is owned by Kudelski subsidiary Nagravision.
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`7.
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`This Court has personal jurisdiction over Defendants pursuant to the laws of the State
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`of California, including California’s Long Arm Statute, California Code of Civil Procedure § 410.10.
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`8.
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`The Court also has personal jurisdiction over each of the Defendants because each of
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`the Defendants have purposely conducted their patent enforcement activities in this District and
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`towards residents of this District, and purposely submitted themselves to the jurisdiction of, or
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`purposely availed themselves of, the Courts in this District. In particular, on information and belief,
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`Defendants’ enforcement efforts have included: (a) hiring counsel who reside and practice in this
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`District (such as Ian Feinberg of Feinberg Day Alberti & Thompson LLP, with respect to the
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`licensing negotiations between TWC and Defendants; Robert F. McCauley from Finnegan,
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`Henderson, who is counsel for OpenTV, Nagravision, and another Kudelski subsidiary in OpenTV,
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`Inc., Nagravision S.A. and Nagra France S.A.S. v. Apple, Inc., N.D. Cal. Case No. 3:15-cv-02008, as
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`well as for OpenTV and Nagravision in OpenTV, Inc. and Nagravision S.A. v. Apple, Inc., N.D. Cal
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`Case No. 3:14-cv-01622; and John Edwards at Kirkland & Ellis, who was counsel of record for
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`OpenTV in OpenTV, Inc. v. Netflix, Inc., N.D. Cal. Case No. 3:14-cv-01525, and for both OpenTV
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`and another Kudelski subsidiary in OpenTV, Inc. and Nagra France SAS v. Netflix, Inc., N.D. Cal.
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`Case No. 3:14-cv-01723) for the express purpose of enforcing their patent rights; (b) filing lawsuits
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`and/or causing lawsuits to be filed in this District to enforce patent rights, including enforcement of
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`the ’169 Patent and ’565 Patent asserted against TWC (see, e.g., OpenTV, Inc. and Nagravison SA. v.
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`Apple Inc., N.D. Cal. Case No. 3:14-cv-01622 and OpenTV, Inc., Nagravision S.A. and Nagra
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`France S.A.S. v Apple, Inc., N.D. Cal. Case No. 3:15-cv-02008); and (c) prosecuting (and/or causing
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`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 4 of 17
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`to be prosecuted) an action to enforce patents, including at least the ’169 Patent asserted against
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`TWC, against Netflix in a case that was originally filed in Delaware and then transferred to this
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`District (see OpenTV, Inc. v. Netflix Inc., N.D. Cal. Case No. 3:14-cv-01525).
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`9.
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`On information and belief, OpenTV employs more than 200 people in the United
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`States. The Kudelski Group website identifies each of OpenTV’s United States Offices as residing
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`within this district. In addition, the Kudelski Group as a whole, including Nagravision, employs
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`nearly 400 people within the United States. The Kudelski Group website identifies only four United
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`States offices, of which three offices are in California and two are within this District.
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`10.
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`On information and belief, Defendants have engaged in licensing negotiations with
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`numerous companies located in this District and have extended licenses to Cisco Systems, Inc., in
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`January 2014, and Google Inc., in April 2015, both of which reside within this District.
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`11.
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`Venue is proper in this Court pursuant to 28 U.S.C. § 1391(b) because OpenTV
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`resides in this District and is subject to the Court’s personal jurisdiction. In addition, venue is proper
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`in this Court pursuant to 28 U.S.C. § 1391(c) because Kudelski SA and Nagravision SA are foreign
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`corporations that may be sued in any jurisdiction where the action may be brought with respect to
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`OpenTV.
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`A.
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`12.
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`THE PATENTS-IN-SUIT
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`U.S. Patent No. 5,907,322
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`The ’322 Patent is entitled “Television event marking system.” A copy of the ’322
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`Patent is attached hereto as Exhibit D. The ’322 Patent states on its face that it was issued to Gregory
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`H. Kelly, Kenneth Y. Goldberg, John S. Gee, Philip D. Levinson, and Scott Fullam. The original
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`assignee is listed as Catch TV Acquisition Corp. The U.S. Patent and Trademark Office lists
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`OpenTV, Inc. as the current assignee.
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`13.
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`The application that issued as the ’322 Patent was filed on October 16, 1996, and the
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`United States Patent and Trademark Office issued the ’322 Patent on May 25, 1999.
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`14.
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`Defendants have alleged that at least Claim 7 of the ’322 Patent is infringed by
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`TWC’s Remote DVR Manager that purportedly provides an Internet (web) interface for viewing
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`iconic representations of recorded content.
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`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 5 of 17
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`B.
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`15.
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`U.S. Patent No. 6,530,082
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`The ’082 Patent is entitled “Configurable monitoring of program viewership and
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`usage of interactive applications.” A copy of the ’082 Patent is attached hereto as Exhibit E. The
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`’082 Patent states on its face that it was issued to Eric E. Del Sesto, Timothy V. Travaille,
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`Christopher J. Michel, and Jana J. Paquette. The original Assignee is listed as Wink
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`Communications, Inc. The U.S. Patent and Trademark Office lists OpenTV, Inc. as the current
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`assignee.
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`16.
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`The application that issued as the ’082 Patent was filed on April 30, 1998, and the
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`United States Patent and Trademark Office issued the ’082 Patent on March 4, 2003.
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`17.
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`Defendants have alleged that at least Claim 27 of the ’082 Patent is infringed by
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`selective polling of customer premises equipment used in association with TWC’s purported
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`audience panel measurement functionality.
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`C.
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`18.
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`U.S. Patent No. 6,678,463
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`The ’463 Patent is entitled “System and method for incorporating previously
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`broadcast content into program recording.” A copy of the ’463 Patent is attached hereto as Exhibit F.
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`The ’463 Patent states on its face that it was issued to Ludovic Pierre and Debra Hensgen. The
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`original assignee is listed as OpenTV Corp. The U.S. Patent and Trademark Office lists OpenTV,
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`Inc. as the current assignee.
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`19.
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`The application that issued as the ’463 Patent was filed on August 2, 2000, and the
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`United States Patent and Trademark Office issued the ’463 Patent on January 13, 2004.
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`20.
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`Defendants have alleged that at least Claim 11 of the ’463 Patent is infringed by
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`TWC digital video recorder (“DVR”) set-top boxes that, purportedly, upon receiving a request to
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`record a program while already buffering that program, determine whether they have available space
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`to store the recording.
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`D.
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`21.
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`U.S. Patent No. 6,895,595
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`The ’595 Patent is entitled “Module manager for interactive television system.” A
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`copy of the ’595 Patent is attached hereto as Exhibit G. The ’595 Patent states on its face that it was
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`issued to Andrew Goodman and Jean Rene Menand. The original assignee is listed as OpenTV, Inc.
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`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 6 of 17
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`22.
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`The application that issued as the ’595 Patent was filed on June 7, 2002, and the
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`United States Patent and Trademark Office issued the ’595 Patent on May 17, 2005. The patent is a
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`continuation of U.S. Patent No. 6,427,238, filed on May 29, 1998.
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`23.
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`Defendants have alleged that at least Claim 1 of the ’595 Patent is infringed by
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`TWC’s Start Over functionality, purportedly allowing TWC customers to restart certain shows
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`already in progress.
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`E.
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`24.
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`U.S. Patent No. 6,985,586
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`The ’586 Patent is entitled “Distributed information and storage system.” A copy of
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`the ’586 Patent is attached hereto as Exhibit H. The ’586 Patent states on its face that it was issued to
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`Michael John Hill. The original assignee is listed as Nagracard S.A. The U.S. Patent and Trademark
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`Office lists Nagravision S.A. as the current assignee.
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`25.
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`The application that issued as the ’586 Patent was filed on February 28, 2001, and the
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`United States Patent and Trademark Office issued the ’586 Patent on January 10, 2006.
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`26.
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`Defendants have alleged that at least Claim 1 of the ’586 Patent is infringed by
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`TWC’s Whole House DVR, which purportedly allows TWC customers to record a program on one
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`set-top box and watch it from another set-top box on the customer’s home network.
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`F.
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`27.
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`U.S. Patent No. 7,055,169
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`The ’169 Patent is entitled “Supporting common interactive television functionality
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`through presentation engine syntax.” A copy of the ’169 Patent is attached hereto as Exhibit I. The
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`’169 Patent states on its face that it was issued to Alain Delpuch, James Whitledge, Jean-Rene
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`Menand, Emmanuel Barbier, Kevin Hausman, Debra Hensgen, and Dongmin Su. The original
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`assignee is listed as OpenTV, Inc.
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`28.
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`The application that issued as the ’169 Patent was filed on April 21, 2003, and the
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`United States Patent and Trademark Office issued the ’169 Patent on May 30, 2005. The application
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`claims priority to Provisional Application No. 60/373,883, filed on April 19, 2002.
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`29.
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`Defendants have alleged that at least Claim 22 of the ’169 Patent is infringed by
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`TWC’s On Demand functionality that purportedly identifies the need for software updates prior to
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`displaying an On Demand program.
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`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 7 of 17
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`G.
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`30.
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`U.S. Patent No. 7,243,139
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`The ’139 Patent is entitled “Enhanced video programming system and method for
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`incorporating and displaying retrieved integrated Internet information segments.” A copy of the ’139
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`Patent is attached hereto as Exhibit J. The ’139 Patent states on its face that it was issued to Craig
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`Ullman, Jack D. Hidary, and Nova T. Spivack. The original assignee is listed as Open TV
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`Corporation. The U.S. Patent and Trademark Office lists OpenTV, Inc. as the current assignee.
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`31.
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`The application that issued as the ’139 Patent was filed on January 22, 2004, and the
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`United States Patent and Trademark Office issued the ’139 Patent on July 10, 2007. The ’139 patent
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`is a continuation of Application No. 08/613,144 (filed March 8, 1996) via several other interim
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`continuation applications.
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`32.
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`Defendants have alleged that at least Claim 8 of the ’139 Patent is infringed by
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`TWC’s purported advertisement insertion capability.
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`H.
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`33.
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`U.S. Patent No. 7,536,704
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`The ’704 Patent is entitled “Method and apparatus automatic pause and resume of
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`playback for a popup on interactive TV.” A copy of the ’704 Patent is attached hereto as Exhibit K.
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`The ’704 Patent states on its face that it was issued to Ludovic Pierre and Janice Mead. The original
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`assignee is listed as OpenTV, Inc.
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`34.
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`The application that issued as the ’704 Patent was filed on October 5, 2001, and the
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`United States Patent and Trademark Office issued the ’704 Patent on May 19, 2009.
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`35.
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`Defendants have alleged that at least Claim 1 of the ’704 Patent is infringed by the
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`PAUSE function on TWC DVR set-top boxes that purportedly pause playback of video content.
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`I.
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`36.
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`U.S. Patent No. 7,669,212
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`The ’212 Patent is entitled “Service platform suite management system.” A copy of
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`the ’212 Patent is attached hereto as Exhibit L. The ’212 Patent states on its face that it was issued to
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`Rachad Alao, Jose Henrard, Alain Delpuch, Vincent Dureau, Vahid Koussari-Amin, Adam Benson,
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`Nicholas Fishwick, Waiman Lam, and Matthew Huntington. The original assignee is listed as
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`OpenTV, Inc.
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`37.
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`The application that issued as the ’212 Patent was filed on February 2, 2001, and the
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`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 8 of 17
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`United States Patent and Trademark Office issued the ’212 Patent on February 23, 2010. The ’212
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`Patent claims priority to Provisional Application Nos. 60/265,986 (filed February 2, 2001),
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`60/266,210 (filed February 2, 2001), 60/267,867 (filed February 9, 2001), 60/269,261 (filed
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`February 15, 2001), and 60/279,543 (filed March 28, 2001).
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`38.
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`Defendants have alleged that at least Claim 44 of the ’212 Patent is infringed by
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`TWC’s advertising systems that purportedly use customer specific information to show tailored
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`advertisements.
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`COUNT ONE
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`(Declaratory Judgment of Non-Infringement of the ’322 Patent)
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`Paragraphs 1 through 38 are incorporated herein as set forth above.
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`Upon information and belief, OpenTV is the current assignee of the ’322 Patent.
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`As set forth above, an actual and justiciable controversy exists between TWC and
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`39.
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`40.
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`41.
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`Defendants regarding infringement of claims of the ’322 Patent by the functionality incorporated in
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`TWC’s Remote DVR Manager.
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`42.
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`The manufacture, use, offer for sale, sale, and/or importation of products and services
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`implementing or utilizing TWC’s Remote DVR Manager does not infringe and has not infringed,
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`directly or indirectly, any claim of the ’322 Patent, either literally or under the doctrine of
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`equivalents.
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`43.
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`For example, Claims 1 and 10 of the ’322 Patent recites “detecting . . . channel data
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`from a channel register”; Claim 4 recites “event selection button coupled to a channel register to read
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`channel data . . . associated with each selected event”; Claim 7 recites “storing . . . channel data from
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`a channel register.” TWC Remote DVR Manager does not infringe any claim of the ’322 Patent at
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`least because it does not meet the “channel register” requirements of these limitations.
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`44.
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`TWC is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
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`and/or importation of products and services implementing or utilizing TWC’s Remote DVR
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`Manager does not and will not infringe any claim of the ’322 Patent.
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`COUNT TWO
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`(Declaratory Judgment of Non-Infringement of the ’082 Patent)
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`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 9 of 17
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`45.
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`46.
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`47.
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`Paragraphs 1 through 44 are incorporated herein as set forth above.
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`Upon information and belief, OpenTV is the current assignee of the ’082 Patent.
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`As set forth above, an actual and justiciable controversy exists between TWC and
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`Defendants regarding infringement of claims of the ’082 Patent by the functionality of TWC’s
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`purported audience panel measurement functionality.
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`48.
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`The manufacture, use, offer for sale, sale, and/or importation of products and services
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`implementing or utilizing TWC’s purported audience panel measurement functionality does not
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`infringe and has not infringed, directly or indirectly, any claim of the ’082 Patent, either literally or
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`under the doctrine of equivalents.
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`49.
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`For example, Claim 1 of the ’082 Patent recites “executing the interactive application
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`at each broadcast receiver to selectively determine which broadcast receivers will be included in the
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`subset of broadcast receivers for selectively monitoring subscriber usage”; Claim 10 recites
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`“executing the interactive application to determine a subset of the plurality of broadcast receivers for
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`monitoring subscriber wage”; Claim 18 recites “executing the interactive application at each
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`broadcast receiver to determine a subset of the plurality of broadcast receivers to generate
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`responses”; Claim 26 recites “executing the interactive application at each broadcast receiver to
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`determine a subset of the plurality of broadcast receivers for monitoring specified selected
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`attributes”; Claims 27 and 28 recite “executing an interactive application to determine if the
`
`broadcast receiver is one of a subset of a plurality of broadcast receivers for monitoring specified
`
`selected attributes”; and Claim 29 recites “means for executing the interactive application to
`
`selectively determine if the broadcast receiver is one of a subset of a plurality of broadcast receivers
`
`for monitoring specified selected attributes.” TWC purported audience panel measurement
`
`functionality does not infringe any claim of the ’082 Patent at least because it does not meet the
`
`“executing [the/an] interactive application” to determine “which broadcast receivers,” or “executing
`
`[the/an] interactive application” to determine “a subset of a plurality of broadcast receivers”
`
`limitations.
`
`50.
`
`TWC is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
`
`and/or importation of products and services implementing or utilizing TWC’s purported audience
`
`9
`TIME WARNER CABLE INC.’S COMPLAINT FOR DECLARATORY JUDGMENT
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`1 2 3 4 5 6 7 8 9
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`10
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`11
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`12
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`13
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`14
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`15
`
`16
`
`17
`
`18
`
`19
`
`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`

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`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 10 of 17
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`
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`panel measurement functionality does not and will not infringe any claim of the ’082 Patent.
`
`COUNT THREE
`
`(Declaratory Judgment of Non-Infringement of the ’463 Patent)
`
`Paragraphs 1 through 50 are incorporated herein as set forth above.
`
`Upon information and belief, OpenTV is the current assignee of the ’463 Patent.
`
`As set forth above, an actual and justiciable controversy exists between TWC and
`
`51.
`
`52.
`
`53.
`
`Defendants regarding infringement of claims of the ’463 Patent by TWC DVR set-top boxes that,
`
`purportedly, upon receiving a request to record a TV program while already buffering that TV
`
`program, determine whether they have available space to store the recording.
`
`54.
`
`The manufacture, use, offer for sale, sale, and/or importation of TWC DVR set-top
`
`boxes and digital television service does not infringe and has not infringed, directly or indirectly, any
`
`claim of the ’463 Patent, either literally or under the doctrine of equivalents.
`
`55.
`
`Claims 1 and 11 of the ’463 Patent recite “automatically determining whether
`
`sufficient space is available for storing the program, wherein said determining is based at least in
`
`part on data included in the broadcast which indicates a duration of said program”; and Claims 22
`
`and 23 recite “automatically [determine/determining] whether sufficient space is available for
`
`storing the program, wherein said determining is based at least in part on data included in the
`
`broadcast which indicates a maximum bit rate of said program.” TWC’s DVR set-top boxes and
`
`digital television service do not infringe any claim of the ’463 Patent at least because it does not
`
`meet the “determining is based at least in part on data included in the broadcast” portions of these
`
`limitations.
`
`56.
`
`TWC is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
`
`and/or importation TWC DVR set-top boxes in conjunction with digital television service does not
`
`and will not infringe any claim of the ’463 Patent.
`
`COUNT FOUR
`
`(Declaratory Judgment of Non-Infringement of the ’595 Patent)
`
`Paragraphs 1 through 56 are incorporated herein as set forth above.
`
`Upon information and belief, OpenTV is the current assignee of the ’595 Patent.
`
`57.
`
`58.
`
`10
`TIME WARNER CABLE INC.’S COMPLAINT FOR DECLARATORY JUDGMENT
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`1 2 3 4 5 6 7 8 9
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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`

`
`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 11 of 17
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`
`
`59.
`
`As set forth above, an actual and justiciable controversy exists between TWC and
`
`Defendants regarding infringement of claims of the ’595 Patent by the capability incorporated in the
`
`Start Over functionality included in TWC’s digital television service, purportedly allowing the
`
`customer to restart certain shows already in progress.
`
`60.
`
`The manufacture, use, offer for sale, sale, and/or importation of products and services
`
`implementing or utilizing the Start Over functionality included in TWC’s digital television service,
`
`purportedly allowing the customer to restart certain shows already in progress, does not infringe and
`
`has not infringed, directly or indirectly, any claim of the ’595 Patent, either literally or under the
`
`doctrine of equivalents.
`
`61.
`
`Claims 1, 6, 11, and 16 of the ’595 Patent recites “[store/storing] said retrieved
`
`interactive television application modules.” TWC’s Start Over functionality does not infringe any
`
`claim of the ’595 Patent at least because it does not meet this limitation.
`
`62.
`
`TWC is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
`
`and/or importation of products and services implementing or utilizing the Start Over functionality
`
`included in TWC’s digital television service allowing the customer to restart certain shows already
`
`in progress does not and will not infringe any claim of the ’595 Patent.
`
`COUNT FIVE
`
`(Declaratory Judgment of Non-Infringement of the ’586 Patent)
`
`Paragraphs 1 through 62 are incorporated herein as set forth above.
`
`Upon information and belief, Nagravision is the current assignee of the ’586 Patent.
`
`As set forth above, an actual and justiciable controversy exists between TWC and
`
`63.
`
`64.
`
`65.
`
`Defendants regarding infringement of claims of the ’586 Patent by the functionality incorporated in
`
`TWC’s Whole House DVR, which purportedly allows TWC customers to record a program on one
`
`set-top box and watch it from another set-top box on the customer’s home network.
`
`66.
`
`The manufacture, use, offer for sale, sale, and/or importation of products and services
`
`implementing or utilizing TWC’s Whole House DVR which purportedly allows TWC customers to
`
`record a program on one set-top box and watch it from another set-top box on the customer’s home
`
`network, does not infringe and has not infringed, directly or indirectly, any claim of the ’586 Patent,
`
`11
`TIME WARNER CABLE INC.’S COMPLAINT FOR DECLARATORY JUDGMENT
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`1 2 3 4 5 6 7 8 9
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`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
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`22
`
`23
`
`24
`
`25
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`26
`
`27
`
`28
`
`

`
`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 12 of 17
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`
`
`either literally or under the doctrine of equivalents.
`
`67.
`
`For example, Claim 1 of the ’586 Patent recites “the operating centre comprises
`
`means for transmitting the authorization to the second unit to decrypt the product” and Claim 4
`
`recites “transmitting by the operating centre the necessary data for the decryption of the product.”
`
`TWC’s Whole House DVR does not infringe any claim of the ’586 Patent at least because it does not
`
`meet these limitations.
`
`68.
`
`TWC is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
`
`and/or importation of products and services implementing or utilizing TWC’s Whole House DVR,
`
`which purportedly allow TWC customers to record a program on one set-top box and watch it from
`
`another set-top box on the customer’s home network, does not and will not infringe any claim of the
`
`’586 Patent.
`
`COUNT SIX
`
`(Declaratory Judgment of Non-Infringement of the ’169 Patent)
`
`Paragraphs 1 through 68 are incorporated herein as set forth above.
`
`Upon information and belief, OpenTV is the current assignee of the ’169 Patent.
`
`As set forth above, an actual and justiciable controversy exists between TWC and
`
`69.
`
`70.
`
`71.
`
`Defendants regarding infringement of claims of the ’169 Patent by the functionality incorporated in
`
`TWC’s On Demand functionality, that purportedly identifies the need for software updates prior to
`
`displaying On Demand content.
`
`72.
`
`The manufacture, use, offer for sale, sale, and/or importation of products and services
`
`implementing or utilizing TWC’s On Demand functionality does not infringe and has not infringed,
`
`directly or indirectly, any claim of the ’169 Patent, either literally or under the doctrine of
`
`equivalents.
`
`73.
`
`Each of the claims of the ’169 Patent recites a “prerequisite directive.” In addition,
`
`Claims 1, 22, and 23 of the ’169 Patent recite “prohibit[ing] [initiation/the presenting] of said
`
`presentation until said subset of resources are acquired, in response to determining the one or more
`
`directives include said prerequisite directive” and Claim 13 recites “prohibit initiation of said
`
`presentation until said subset of resources are acquired, in response to detecting said first signals.”
`
`12
`TIME WARNER CABLE INC.’S COMPLAINT FOR DECLARATORY JUDGMENT
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`1 2 3 4 5 6 7 8 9
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`10
`
`11
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`12
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`13
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`14
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`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
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`22
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`23
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`24
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`25
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`26
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`27
`
`28
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`

`
`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 13 of 17
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`
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`TWC’s On Demand functionality does not infringe any claim of the ’169 Patent at least because it
`
`does not meet these limitations.
`
`74.
`
`TWC is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
`
`and/or importation of products and services implementing or utilizing TWC’s On Demand
`
`functionality does not and will not infringe any claim of the ’169 Patent.
`
`COUNT SEVEN
`
`(Declaratory Judgment of Non-Infringement of the ’139 Patent)
`
`Paragraphs 1 through 74 are incorporated herein as set forth above.
`
`Upon information and belief, OpenTV is the current assignee of the ’139 Patent.
`
`As set forth above, an actual and justiciable controversy exists between TWC and
`
`75.
`
`76.
`
`77.
`
`Defendants regarding infringement of claims of the ’139 Patent by the functionality incorporated in
`
`TWC’s purported advertisement insertion capability.
`
`78.
`
`The manufacture, use, offer for sale, sale, and/or importation of products and services
`
`implementing or utilizing TWC’s purported advertisement insertion capability does not infringe and
`
`has not infringed, directly or indirectly, any claim of the ’139 Patent, either literally or under the
`
`doctrine of equivalents.
`
`79.
`
`Claims 1, 8, 14, 22, and 27 of the ’139 Patent recite “timing indicia controls when the
`
`address is used for retrieving online content relating to the program into the programming signal.”
`
`TWC’s purported advertisement insertion capability does not infringe any claim of the ’139 Patent at
`
`least because it does not meet this limitation.
`
`80.
`
`TWC is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
`
`and/or importation of products and services implementing or utilizing TWC’s purported
`
`advertisement insertion capability does not and will not infringe any claim of the ’139 Patent.
`
`COUNT EIGHT
`
`(Declaratory Judgment of Non-Infringement of the ’704 Patent)
`
`Paragraphs 1 through 80 are incorporated herein as set forth above.
`
`Upon information and belief, OpenTV is the current assignee of the ’704 Patent.
`
`As set forth above, an actual and justiciable controversy exists between TWC and
`
`81.
`
`82.
`
`83.
`
`13
`TIME WARNER CABLE INC.’S COMPLAINT FOR DECLARATORY JUDGMENT
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`1 2 3 4 5 6 7 8 9
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`10
`
`11
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`12
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`13
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`14
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`15
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`16
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`17
`
`18
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`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 3:16-cv-02433 Document 1 Filed 05/04/16 Page 14 of 17
`
`
`
`Defendants regarding infringement of claims of the ’704 Patent by the PAUSE functionality of TWC
`
`DVR set-top boxes.
`
`84.
`
`The manufacture, use, offer for sale, sale, and/or importation of DVR set-top boxes
`
`and services implementing or utilizing TWC’s PAUSE functionality does not infringe and has not
`
`infringed, directly or indirectly, any claim of the ’704 Patent, either literally or under the doctrine of
`
`equivalents.
`
`85.
`
`Claims 1, 11, and 20 of the ’704 Patent recite “assign[ing] a priority to the
`
`[received/detected] event.” TWC does not infringe any claim of the ’704 Patent at least because it
`
`does not meet this limitation.
`
`86.
`
`T