Litigation Details for DISH Technologies L.L.C. v. Univision Communications Inc. (D. Del. 2019)

DISH Technologies L.L.C. v. Univision Communications Inc. (D. Del. 2019)

Docket	1:19-cv-00144	Date Filed	2019-01-28
Court	District Court, D. Delaware	Date Terminated	2019-04-03
Cause	35:271 Patent Infringement	Assigned To	Leonard Philip Stark
Jury Demand	Plaintiff	Referred To
Patents	11,116,783
Link to Docket	External link to docket

Details for DISH Technologies L.L.C. v. Univision Communications Inc. (D. Del. 2019)

Date Filed	Document No.	Description	Snippet	Link To Document
2019-01-28				External link to document

DISH Technologies L.L.C. v. Univision Communications Inc. | 1:19-cv-00144 Litigation Summary and Analysis

Last updated: February 19, 2026

This document provides a summary and analysis of the patent litigation between DISH Technologies L.L.C. (DISH) and Univision Communications Inc. (Univision) in Case Number 1:19-cv-00144, filed in the U.S. District Court for the District of Delaware. The litigation concerns allegations of patent infringement related to video-on-demand (VOD) technology.

What are the Core Patents in Dispute?

The litigation centers on two patents asserted by DISH against Univision:

• U.S. Patent No. 9,185,540 titled "System and method for efficiently managing video-on-demand services."
• U.S. Patent No. 10,250,712 titled "System and method for facilitating video-on-demand requests."

Both patents relate to the delivery and management of video-on-demand content, specifically addressing the process by which users request and receive content from a server.

What is the Alleged Infringing Activity?

DISH alleges that Univision infringes these patents through its provision of video-on-demand services. Specifically, DISH claims that Univision's VOD platform, which allows users to access and stream television programs and movies on demand, incorporates technologies and processes that fall within the scope of the patent claims. The lawsuit asserts that Univision's "Univision NOW" service and other VOD offerings are the infringing products.

What is Univision's Defense Strategy?

Univision has mounted a multi-faceted defense, primarily challenging the validity and scope of DISH's patents. Key defense arguments include:

• Non-Infringement: Univision argues that its VOD technology does not practice the claims of DISH's patents. This involves detailed technical comparisons of Univision's system against the patent limitations.
• Invalidity: Univision contends that the asserted patents are invalid. Grounds for invalidity often include anticipation by prior art (meaning the invention was already known or described in existing publications or patents) or obviousness (meaning the invention would have been obvious to a person of ordinary skill in the relevant field at the time of invention).
• Claim Construction Disputes: A significant aspect of patent litigation involves defining the meaning of claim terms. Univision has sought interpretations of key terms in DISH's patents that would exclude Univision's technology from their scope.

What Has Been the Procedural History of the Case?

The case has progressed through several key stages:

• Filing of the Complaint: DISH filed its initial complaint on January 28, 2019.
• Institution of Inter Partes Review (IPR): Univision petitioned the U.S. Patent and Trademark Office (USPTO) for inter partes review of both U.S. Patent No. 9,185,540 and U.S. Patent No. 10,250,712. IPR proceedings are an administrative process used to challenge the validity of granted patents.
  • The USPTO instituted IPR proceedings for both patents, indicating that there was a reasonable likelihood that at least one of the claims challenged by Univision would be found invalid.
  • IPR2019-01203 for U.S. Patent No. 9,185,540.
  • IPR2019-01308 for U.S. Patent No. 10,250,712.
• Stay of District Court Proceedings: Following the institution of the IPRs, the District Court proceedings were stayed pending the outcome of the USPTO reviews. This is a common practice when IPRs are instituted.
• PTAB Decisions: The Patent Trial and Appeal Board (PTAB) issued its final written decisions in both IPRs:
  • In IPR2019-01203, the PTAB found U.S. Patent No. 9,185,540, in its entirety, unpatentable. This decision invalidated all claims of the patent.
  • In IPR2019-01308, the PTAB found U.S. Patent No. 10,250,712, in its entirety, unpatentable. This decision invalidated all claims of the patent.
• Appeals of PTAB Decisions: DISH appealed the PTAB's decisions to the United States Court of Appeals for the Federal Circuit.
• Federal Circuit Affirmances: The Federal Circuit affirmed the PTAB's findings of invalidity for both patents.
  • In Case No. 2022-1047, the Federal Circuit affirmed the PTAB's decision regarding U.S. Patent No. 9,185,540.
  • In Case No. 2022-1048, the Federal Circuit affirmed the PTAB's decision regarding U.S. Patent No. 10,250,712.
• Final Judgment in District Court: Following the Federal Circuit's affirmances, the District Court entered a final judgment of non-infringement and invalidity, dismissing DISH's case against Univision.

What is the Significance of the IPR Proceedings?

The IPR proceedings were critical in this litigation. They provided Univision with an avenue to challenge the validity of DISH's patents outside of the district court. The PTAB, staffed by administrative patent judges with technical expertise, can invalidate patents based on prior art that may not have been thoroughly considered during the original patent examination. The fact that the PTAB found all challenged claims of both patents unpatentable, and that these decisions were subsequently upheld by the Federal Circuit, demonstrates the effectiveness of the IPR process as a mechanism for challenging patent validity.

What is the Impact of the Federal Circuit's Rulings?

The Federal Circuit's affirmances of the PTAB decisions have definitively resolved the patent infringement claims. By upholding the invalidity of both asserted patents, the Federal Circuit has affirmed that Univision is not infringing DISH's intellectual property in this specific instance. This outcome significantly limits DISH's ability to assert these particular patents against any other party in the future, as the patents are now considered invalid.

What are the Financial and Business Implications?

The litigation's outcome has several financial and business implications:

• For DISH: The loss in this litigation means DISH has failed to secure any damages or injunctive relief from Univision based on these patents. The costs associated with pursuing this litigation, including attorney fees and expert witness expenses, represent a financial expenditure without a corresponding return. Furthermore, the invalidation of the patents weakens DISH's overall patent portfolio regarding VOD technology.
• For Univision: Univision has successfully defended itself against patent infringement allegations, avoiding potential damages and the imposition of any injunctions that could have disrupted its VOD services. This outcome frees Univision from the financial and operational risks associated with this specific lawsuit and validates its current VOD technology from this patent challenge.
• For the Industry: The invalidation of these patents may have broader implications for other companies operating in the VOD space. Patents that are found invalid in IPR proceedings are often considered weak or unpatentable, potentially reducing the threat of similar litigation from DISH or other patent holders relying on similar claims.

Key Takeaways

• DISH Technologies L.L.C. sued Univision Communications Inc. for infringement of U.S. Patent Nos. 9,185,540 and 10,250,712, related to video-on-demand (VOD) technology.
• Univision challenged the patents' validity through inter partes review (IPR) at the USPTO.
• The Patent Trial and Appeal Board (PTAB) found all claims of both asserted patents unpatentable.
• The U.S. Court of Appeals for the Federal Circuit affirmed the PTAB's decisions, upholding the invalidity of both patents.
• The District Court entered a final judgment in favor of Univision, dismissing DISH's patent infringement claims.

Frequently Asked Questions

1. What were the specific claims in U.S. Patent Nos. 9,185,540 and 10,250,712 that were invalidated? The Patent Trial and Appeal Board (PTAB) invalidated all challenged claims in both U.S. Patent No. 9,185,540 and U.S. Patent No. 10,250,712. The specific claims invalidated covered various aspects of managing and facilitating video-on-demand requests and delivery systems.

2. Can DISH appeal the Federal Circuit's decision? Appeals from the Federal Circuit are typically heard by the U.S. Supreme Court. However, the Supreme Court grants review in a very small percentage of cases. The Federal Circuit's ruling is considered the final determination in this specific patent litigation unless the Supreme Court chooses to hear the case.

3. What is the implication of the invalidated patents on future VOD technology development? The invalidation of these patents suggests that the specific technical approaches claimed in them may not be patentable due to prior art or obviousness. This could free other companies to implement similar technologies without fear of infringement from these specific patents, but it does not preclude patentability for novel and non-obvious advancements in VOD technology.

4. Did Univision pay any settlement to DISH? Based on the publicly available record, there was no settlement. The litigation concluded with the Federal Circuit affirming the PTAB's decisions of invalidity and the District Court entering a final judgment for Univision.

5. Are there other patents that DISH holds related to VOD technology that could be asserted in the future? DISH may hold other patents related to VOD technology. The outcome of this litigation pertains specifically to U.S. Patent Nos. 9,185,540 and 10,250,712. The patentability and potential enforceability of DISH's other VOD patents would need to be assessed independently.

Citations

[1] Complaint for Patent Infringement, DISH Technologies L.L.C. v. Univision Communications Inc., No. 1:19-cv-00144 (D. Del. Jan. 28, 2019). [2] Univision Communications Inc. v. DISH Technologies L.L.C., Case No. IPR2019-01203 (PTAB Aug. 18, 2021). [3] Univision Communications Inc. v. DISH Technologies L.L.C., Case No. IPR2019-01308 (PTAB Oct. 20, 2021). [4] DISH Technologies L.L.C. v. Univision Communications Inc., No. 2022-1047 (Fed. Cir. Feb. 8, 2024). [5] DISH Technologies L.L.C. v. Univision Communications Inc., No. 2022-1048 (Fed. Cir. Feb. 8, 2024). [6] Final Judgment, DISH Technologies L.L.C. v. Univision Communications Inc., No. 1:19-cv-00144 (D. Del. Mar. 8, 2024).