New Video Streaming Campaign Hits Crackle and Vudu with Patent Portfolio Originating with ETRI
- September 28, 2019
Category: New Patent LitigationMarket Sector: Media Content and Distribution
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.