Helios Streaming, LLC et al v. Crackle, Inc. et al
- Filed: 09/27/2019
- Closed: 11/12/2020
- Latest Docket Entry: 11/12/2020
February 19, 2021
Delaware plaintiff Helios Streaming, LLC (as exclusive licensee) and its Korean parent Ideahub, Inc. (as patent owner) have followed up their January case against Fandango (8:21-cv-00211) with a new suit against Comcast (NBC Universal Media, Peacock TV) (8:21-cv-00259). The two cases fall within a media streaming campaign in which the plaintiffs target “the standard for dynamic adaptive streaming delivery of MPEG media over HTTP, ISO/IEC 23009-1:2014, and subsequent versions of this standard” (MPEG-DASH). Both were filed in the Central District of California wing of the campaign, in which District Judge James V. Selna just held a claim construction hearing; a Markman hearing in the Delaware cases is currently scheduled for this May.
Still Waging a Campaign over Former ETRI Patents, Ideahub’s Helios Streaming Acquires a Portfolio from SK PlanetApril 22, 2020
An early 2020 assignment from SK Planet (a subsidiary of SK Telecom) to NPE Helios Streaming, LLC is among the patent transactions made public by the USPTO this month. Meanwhile, multiple defendants in the NPE’s media streaming campaign—launched in 2019 with coplaintiff Ideahub, Inc. over former Electronics and Telecommunications Research Institute (ETRI) patents—have filed Rule 12(b)(6) motions, one of which is scheduled to be (telephonically) heard this week.
SK Planet to Helios Streaming
In a series of assignments executed on February 21, 2020, SK Planet assigned a total of nine homegrown US assets to Helios Streaming, along with a number of counterparts in Asia; the assignment was recorded with the USPTO on April 15. The transacted assets, which have not been asserted in any litigation to date, generally concern “reproducing a digital content”, “providing a digital TV application”, and various aspects of video streaming. They can be reviewed on RPX Insight here.
Currently available USPTO records do not identify any other US assets held by Helios Streaming besides those received from SK Planet.
The Helios Streaming and Ideahub Campaign
In late 2019, Helios Streaming and Ideahub (disclosed in a recently filed amended corporate disclosure statement as the former’s corporate parent) launched a campaign targeting media streaming providers, hitting CBS (Showtime); Crackle and Crackle Plus, Sony (Sony Pictures Entertainment, Sony Pictures Television), and Chicken Soup for the Soul Entertainment (the “Crackle defendants”); Lions Gate Entertainment (Starz); and Walmart (VUDU). In total, eleven patents, originally developed in whole or in part by ETRI and generally related to the MPEG-DASH standard, are asserted. At the start of the campaign, in September 2019, RPX flagged a web of agreements seeming to preserve interest in the outcome of the Helios Streaming campaign by certain nonparties, including ETRI, Intellectual Discovery Co., Ltd., and Korea Aerospace University; see “Recent Media Streaming Campaign Expands Outside of Delaware” (November 2019) for more details.
While Showtime and Starz have answered the complaints filed against them, the Crackle defendants as well as Vudu have filed motions to dismiss for failure to state a claim (see here and here, respectively). Vudu’s motion is scheduled to be heard—telephonically, presumably in light of COVID-19—on April 29.
More on Ideahub and Its Associated NPEs
On its website, Ideahub describes itself as a Korean patent monetization firm, based in Seoul, hoping to “be a connecting port for such  ideas, just like a HUB airport”. Kyeong-su “Keith” Im identifies himself as having been the CEO and president of Ideahub since October 2016. He reports past work with LG Electronics from January 1996 through April 2012, with a subsequent position (as “IP Licensing Director”) with Intellectual Discovery from May 2012 to June 2013, followed by the time as “Senior Director” with TiVo/Rovi.
Ideahub’s also website indicates that it shares management with Glocom, Inc., the parent entity of litigating NPEs Modern Telecom Systems, LLC and SIPCO LLC. (Blockchain-centric LegalBlock includes Kyeong-su Im among its legal team, describing him as the CEO of both Ideahub and Glocom.) SIPCO recently added an April case against HP Enterprise (Aruba Networks) to the two suits that it filed last month—one against each of D-Link and TP-Link; see “SIPCO Expands One of the Longest Running Active Litigation Campaigns” (April 2020) for more details.
Litigation by these and other NPEs apparently associated plaintiffs appear to fit into a set of five “licensing programs” described on Ideahub’s website—IOT and Industrial Automation, Wireless & Telecommunication, MPEG Audio, AR & VR, and Video Entertainment—consideration of which can be reviewed at “Former Imbera Electronics Assets Appear Headed Toward Assertion” (March 2020).
November 6, 2019
The streaming campaign of Helios Streaming, LLC (as exclusive licensee) and Ideahub, Inc. (as patent owner) has expanded for the second month in a row. October saw a third Delaware suit, with CBS (Showtime) joining Crackle, Sony, and Walmart (VUDU), and others, as defendants there, while November has seen the plaintiffs file in the Central District of California, this time against Lions Gate Entertainment (Starz Entertainment) (8:19-cv-02140). Targeted is Starz’s media streaming service, with multiple patents originally developed in whole or in part by the Electronics and Telecommunications Research Institute (ETRI), patents assigned to the plaintiffs through a web of agreements seeming to preserve interests in the outcome of the litigation by certain nonparties—the plaintiffs’ recent notice of interested parties in California, identifying no such nonparties, notwithstanding.
Federal Circuit Faults PTAB’s CBM Eligibility Determination in AIA Review Against NPE Linked to Korean Monetization FirmSeptember 29, 2019
The Federal Circuit has partially reversed and remanded a ruling by the Patent Trial and Appeal Board (PTAB) that a device monitoring patent asserted by SIPCO LLC was eligible for covered business method (CBM) review, which led to a January 2018 final decision cancelling claims from the patent under Alice and Section 103. Ruling on September 25, a Federal Circuit majority held that the Board had relied upon an improper claim construction for its determination that the patent does not fall within an exception excluding patents that “solve . . . a technical problem using a technical solution” from CBM review (2018-1635). Inventor-controlled SIPCO has seen multiple changes in corporate ownership since the 2005 launch of its litigation campaign, including the publicly announced 2012 acquisition of part ownership stakes by General Electric and MPEG LA. A more recent change in ownership came with less fanfare: In early 2018, SIPCO disclosed in public filings that it is now wholly owned by Glocom, Inc., a Maryland company apparently led by the CEO of Korean patent monetization firm Ideahub, Inc., the latter of which has touted an investment in SIPCO. Ideahub has also just launched a push into US courts in its own right, cofiling litigation with new NPE plaintiff Helios Streaming, LLC.
September 28, 2019
Helios Streaming, LLC (as the asserted patents’ exclusive licensee) and Ideahub, Inc. (as their owner) have launched litigation over 11 patents allegedly related to the Dynamic Adaptive Streaming over HTTP (DASH, a/k/a MPEG-DASH) adaptive bitrate streaming standard, suing Crackle and Crackle Plus, Sony (Sony Pictures Entertainment, Sony Pictures Television), and Chicken Soup for the Soul Entertainment (1:19-cv-01818) (the “Crackle defendants”) as well as Walmart (Vudu) (1:19-cv-01792). The District of Delaware complaints respectively target the Crackle/Crackle Plus and Vudu video on-demand services’ use of streaming with MPEG-DASH, detailing a series of attempts by Helios to contact Vudu between August 2018 and March 2019 and to contact the Crackle defendants between August 2018 and September 2019. The original development work for the patents-in-suit was conducted in whole or in part by the Electronics and Telecommunications Research Institute (ETRI).
The patents-in-campaign break out into seven members from a family of ten (8,645,562; 8,909,805; 9,325,558; 9,467,493; 10,027,736; 10,277,660; 10,362,130); two members of a family of four (10,270,830; 10,313,414); and a single patent from each of two more families, one having two members (10,375,373) and the other three (10,356,145). Vudu is accused of infringing all 11, while all but the ‘736 patents are asserted against the Crackle defendants. Both complaints plead that “many of the claims” of the patents respectively in suit “are subject to Fair, Reasonable, and Non-Discriminatory (‘FRAND’) licensing obligations to willing licensees”. Prosecution of related applications in all four families continues before the USPTO, with at least one continuation filed as recently as June 2019. Ideahub received the families, together with multiple other, unrelated families, from ETRI in a series of assignments throughout 2018, passing certain rights to Helios Streaming in early August 2018.
That August 2018 assignment agreement from Ideahub to Helios, filed with the USPTO, reveals ETRI, Intellectual Discovery Co., Ltd., and Korea Aerospace University as having each retained an interest in assertion efforts based on the terms of an earlier agreement executed in April 2018 (and apparently not attached to the relevant assignment records). The Ideahub-to-Helios assignment agreement breaks down the division of any proceeds, the agreement defining “Adjusted Net Royalties of Licensed Patents” as “the remainder of Net Royalties of Licensed Patents after ETRI Distribution Share”, with the “ETRI Distribution Share” defined to “mean a percentage of Net Royalties of Licensed Patents, the exact percentage(s) of which are specified under the ‘Patent Assignment Agreement’ and the ‘Exclusive Patent License Agreement’ between [ETRI] and IDEAHUB, both of which were executed on April 30, 2018. For avoidance of doubt, ETRI Distribution Share of the MPEG-DASH Patents as listed in Exhibit B will include Intellectual Discovery’s twenty two percent (22%) revenue share but not Korea Aerospace University’s revenue share as set forth in the Patent Assignment Agreement between ETRl and IDEAHUB executed on April 30, 2018.”
The agreement further specifies the amount of the “Adjusted Net Royalties of Licensed Patents”—presumably licensing revenue minus ETRI’s cut—that Helios must pay Ideahub and indicates that the Korea Patent Investment Corporation (KPIC) has invested in Helios: “HELIOS shall distribute 37.5% of Adjusted Net Royalties of Licensed Patents to IDEAHUB until KPIC recovers the amount of KPIC investment to Helios (KRW 2.5 billion) under ‘Investment Agreement’ between KPIC and Helios, and 100% of Adjusted Net Royalties of Licensed Patents to IDEAHUB until IDEAHUB recovers it's [sic] investment (KRW 1.8 billion), and 56.9% of Adjusted Net Royalties of Licensed Patents to IDEAHUB afterwards.” Additionally, the agreement provides that if Helios’s “revenue share distribution” to Ideahub, as defined elsewhere in the agreement (and as described above), exceeds $10M USD, Helios “shall have the option to obtain ownership of [the] MPEG-DASH patents . . . at no additional consideration to IDEAHUB.”
Providing an Irvine, California address, Helios Streaming was formed in Delaware in February 2018. It advertises that it “has acquired and will continue to acquire intellectual property rights covering the necessary features and technologies utilized by the video streaming industry”. Los Angeles attorney Emil Kim holds himself out as the president and founder of Helios Streaming. Kim also identifies himself as having been a senior director of licensing at TiVo/Rovi since April 2014 (Rovi having acquired TiVo in 2016). Hyungseok “Harold” Ko served as the correspondent on the Ideahub-to-Helios license agreement; Ko was also the correspondent on the assignment of patents from ETRI to Ideahub. (In assignment records, Helios lists the same Delaware registered agent address as Ko—and as litigating NPE SynKloud Technologies, LLC—8 The Green, Suite A, Dover.)
A Korean firm, Ideahub was formed in November 2016 and provides an address in Seoul. It presents itself as a “research corporation” with multiple licensing programs—in “IoT & Industrial Automation”, “Wireless & Telecommunication”, “MPEG Audio”, “AR & VR”, and “Video Entertainment”. “Keith” Kyeong-su Im identifies himself as based in Orange County, California and as having been Ideahub’s CEO and president since October 2016. He touts past work with LG Electronics from January 1996 through April 2012, with apparent subsequent positions (as “IP Licensing Director”) with Intellectual Discovery from May 2012 to June 2013 and with TiVo/Rovi (as “Senior Director”) from June 2013 to September 2016. Ideahub’s website indicates that it shares management with Glocom, Inc., the parent entity of litigating NPEs SIPCO LLC and Modern Telecom Systems, LLC. (Blockchain-centric LegalBlock includes Kyeong-su Im among its legal team, describing him as the CEO of both Ideahub and Glocom.)
SIPCO, which was previously part-owned by General Electric and MPEG LA before its acquisition by Glocom, has waged a mesh networking campaign since 2005. For more information on SIPCO’s corporate history and litigation, as well as details on a recent Federal Circuit ruling largely favorable to the NPE, see “Federal Circuit Faults PTAB’s CBM Eligibility Determination in AIA Review Against NPE Linked to Korean Monetization Firm” (September 2019).
This movement of patents from ETRI into US litigation continues a larger trend; for an in-depth treatment see “2018 Patent Marketplace Trends: ETRI Continues Its Attempts to Exclusively License Patent Assertion Entities” (December 2018). 9/24 and 9/27, District of Delaware.
Editor’s Note: This article was updated after publication to reflect the filing of the Helios Streaming lawsuit against the Crackle defendants.