Avid and Harmonic to Meet in Court Over Patent Dispute

Avid seeks $35 million or more in damages
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Avid seeks $35 million or more in damages
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BURLINGTON, MASS. &SAN JOSE, CALIF.—Avid and Harmonic have a court date. The two have been locked in a patent battle since 2011, when Avid went after Harmonic over patents covering large-file storage and retrieval processes. Both are set to meet in court Nov. 6, 2017, over six claims related to a patent for decompressed video data output that Avid claims Harmonic used in its Spectrum media servers.

“Pertinent to this appeal, [the disputed technology] requires switching to provide video data to a second decompression array at a ‘predefined period of time’ after the first video compression array receives data,” the March 1, 2016 U.S. Court of Appeals decision stated.
Disputed Claims
The disputed claims over patent 291 are described in the March 1, 2016 federal court decision as follows:
A video decompression system comprising:
A first switch coupled to at least two video data input lines, the first switch controlling the direction and rate of video data flow from the video data input lines;
At least two video data decompression arrays coupled to the first switch, the video data decompression arrays storing compressed video data, decompressing the stored compressed video data, and storing the decompressed video data;
A second switch coupled to the video data decompression arrays and to an output bus, the second switch directing output from the at least two video data decompression arrays to the output bus; and
A controller coupled to the first switch, the video data decompression arrays, and to the second switch for controlling the flow of video data through the system.
The system, wherein the controller commands the first switch to provide video data to the first video data decompression array at a first rate, and to provide video data to the remaining video data decompression arrays at a second rate a predefined period of time after the first video data array begins receiving the video data at the first rate.
Avid has two parallel suits against Harmonic. This particular claim started in June of 2012 with an infringement claim filed by Avid in the Delaware U.S. District Court, in which Avid sought injunctive relief and unspecified damages. The claim involved Patent No. 5,495,291, “Decompression system for compressed video data for providing uninterrupted decompressed video data output,” which Avid said Harmonic was using in its Spectrum servers.

According to Avid, Harmonic responded by seeking to have the U.S. Patent and Trademark Office review and nullify Avid’s ’291 patents through re-examination and inter partes review. In 2014, the U.S. Patent Trial and Appeal Board found Avid’s patent claims one through 10 to be invalid, but affirmed the validity of claims 11-16. (See sidebar.)

Harmonic appealed. Briefs were filed. The federal appeals court in D.C. upheld the Patent Trial and Appeal Board’s finding in the aforementioned March 1, 2016 order, with Circuit Judges Kara Farnandez Stoll, Raymond T. Chen, and Haldane Robert Mayer presiding.

Added June 20, 2017—Avid’s further clarification of ’291
Avid’s 291 patent covers a video decompression system for decompressing two streams of compressed video so that they can be played out sequentially in a seamless manner, i.e., without any intervening interruption, such as blank frames. Claims 11-14 are specifically directed to systems that perform such decompression at different rates or at the same rates for the first stream and for the second stream.
Claims 15 and 16 are directed to the timing of switches that direct the compressed streams to the decompression hardware and route the resulting decompressed video to the output display.
Avid also continues to assert claims 17-20 of the 291 patent against Harmonic. Claim 17 is directed to a method that performs the seamless decompression referred to above but does not include any requirements regarding decompression rates of the two incoming streams. Claims 18-20 include specific requirements regarding the decompression rates. A second suit filed in October of 2011, involved two patents that Avid said Harmonic was infringing on with its MediaGrid shared storage system—Patent No. 6,760,808, “Computer system and process for transferring multiple high bandwidth streams of data between multiple storage units and multiple applications in a scalable and reliable manner,” and Patent No. 7487309, “Computer system and process for transferring multiple high bandwidth streams of data between multiple storage units and multiple applications in a scalable and reliable manner.” These patents correspond with Avid’s Nexis storage system.

Harmonic won the second suit on a unanimous verdict in a January 2014 jury trial, according to a summary of court activities in Harmonic’s quarterly report for the period ending March 31, 2017. Avid appealed in the federal circuit, which vacated the verdict in January of 2016 and ordered a new trial.

Harmonic again requested a re-examination and inter partes review of Avid’s claims involving patents ’808 and ’309. On April 10, 2017, the patent office rejected the ’808 claims but affirmed those involving ’309. Avid is appealing the patent office’s rejection of its ’808 infringement claims in the federal circuit.

“Now that the claims of the ’309 patent have been confirmed as patentable, Avid’s infringement case against Harmonic and its MediaGrid system is expected to proceed to the new trial ordered by the Federal Circuit,” Avid said in a statement. “Based on expert testimony, Avid expects its claim against Harmonic could result in up to $35 million in damages through 2013. Avid expects that this amount has increased materially since then. However, the outcome of litigation is inherently uncertain and Avid may not recover any or all of damages it seeks.

For its part, Harmonic deferred to comment beyond its SEC filings. Again, from the 1Q17: “The company is unable to predict the outcome of these lawsuits and therefore is unable to estimate an amount or range of any reasonably possible losses resulting from them. An unfavorable outcome on any litigation matter could require that the company pay substantial damages, or, in connection with any intellectual property infringement claims, could require that the company pay ongoing royalty payments or could prevent the company from selling certain of its products.”

Michael Balderston contributed to this report.