Litigation

Dr. Edwin A. Hernandez et al. v. Stingray Digital Group Inc. et al.

active

1:24-cv-21226

Filed
2024-04-02

Patents at issue (1)

Summary

This ongoing district court case, asserting patent infringement involving US Patent 10123074, had most defendants' motion to dismiss denied, leaving 8 claims, and a trial is set for March 2026. Motions for Summary Judgment and motions to Strike/Exclude Testimony are currently pending.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

Dr. Edwin A. Hernandez and his company, EGLA Corp., have brought a patent infringement and trade secret misappropriation lawsuit against multiple defendants, including Stingray Digital Group Inc., Stingray Music USA, Inc., MOOD MEDIA LLC, AT&T Enterprises, LLC, MILLICOM International Services, LLC, and Blue Stream Communications, LLC d/b/a Blue Stream Fiber. Dr. Hernandez is the sole inventor and owner of the asserted patents, and EGLA Corp. is a Florida-based technology innovation company that develops its own streaming, AI, and wireless technologies, and also provides intellectual property and litigation consulting services. This dual nature suggests that while EGLA Corp. is an operating company with its own products, it also actively engages in patent assertion, leveraging Dr. Hernandez's extensive patent portfolio and expertise as an expert witness. The defendants are prominent players in the digital media and telecommunications industries: Stingray provides multi-platform streaming music services to consumers and businesses; Mood Media offers in-store music and digital signage solutions; and AT&T, Millicom, and Blue Stream Fiber are telecommunications and internet service providers that distribute streaming content, including Stingray Music.

The core of the litigation revolves around the alleged infringement of US Patent No. 10,123,074 ('074 Patent), among others, and the misappropriation of trade secrets. The accused products and services include Stingray's UbiquiCAST OSE2 servers and related streaming platforms, which deliver music services to Cable TV Operators, IPTV systems, and OTT Service Providers. Specifically, Stingray Music, a prominent streaming product, is distributed via UbiquiCAST to various cable TV operators, including those associated with AT&T and Millicom. The '074 Patent, titled "Cloud-based content delivery system," generally describes a system and method for efficiently delivering multimedia content from the cloud to various platforms, including cable television, web, and mobile devices. The trade secret claims allege that confidential technologies shared by Dr. Hernandez and EGLA Corp. with Mood Media under a Non-Disclosure Agreement were subsequently shared unlawfully with Stingray.

This active case is being heard in the Florida Southern District Court (Case No. 1:24-cv-21226) before Judge Ed Artau, with Chief Magistrate Judge Edwin G. Torres handling preliminary matters. The Southern District of Florida is a relevant venue due to the plaintiffs' location in Boca Raton, Florida, and the involvement of Florida-based defendant Blue Stream Fiber. The procedural posture indicates significant activity: most defendants' motion to dismiss was denied, leaving eight claims standing as of March 2025, and Mood Media's motion for summary judgment was also denied in March 2026. The case is particularly notable for several reasons, including its focus on patent and trade secret issues in the rapidly evolving digital media streaming industry. Additionally, Stingray initiated three Inter Partes Reviews (IPRs) against Dr. Hernandez's patents in late 2024; however, in a significant development in June 2026, the Patent Trial and Appeal Board (PTAB) upheld the challenged patent claims, representing a notable victory for the plaintiffs.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Key Legal Developments and Outcome in Hernandez et al. v. Stingray Digital Group Inc. et al.

This patent infringement litigation, Case No. 1:24-cv-21226, filed in the Florida Southern District Court, concerns U.S. Patent 10,123,074. The case remains active, with a partial stay in place for the patent claims due to ongoing inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB).

Chronological Overview of Legal Developments:

2024

  • April 2, 2024: Complaint Filed. Dr. Edwin A. Hernandez and EGLA Corp. initiated the lawsuit against multiple defendants, including Stingray Digital Group Inc., Stingray Music USA, Inc., MOOD MEDIA, AT&T, MILLICOM, Inc., Does 1-700, and Blue Stream Fiber, alleging infringement of U.S. Patent 10,123,074.
  • December 24, 2024 (approximate): IPRs Filed. Around Christmas Eve, Stingray and other defendants filed three inter partes review (IPR) petitions against U.S. Patent 10,123,074 with the PTAB, seeking to invalidate the patent.

2025

  • February 12, 2025: Motion to Stay Denied. An initial motion to stay the case was denied by the judge.
  • March 4, 2025: Report and Recommendation on Motion to Dismiss. A Report and Recommendation was issued by Chief Magistrate Judge Edwin G. Torres regarding a joint motion to dismiss filed by several defendants (Stingray Music USA, Inc., Blue Stream Communications, LLC d/b/a Blue Stream Fiber, Millicom International Services, LLC, Stingray Group Inc.). The report recommended that the motion be GRANTED in part (as to a fraud claim) and DENIED in part (as to all other claims).
  • April 24, 2025: Case Stayed (initially). The Court initially stayed the case following the termination of Plaintiffs' counsel.
  • August 6, 2025: Motion to Extend Stay Granted in Part and Denied in Part. Defendants Stingray Music USA, Inc., AT&T Enterprises, LLC, Millicom International Services, LLC, and Blue Stream Communications, LLC filed a motion to extend the existing stay. The Court granted the motion in part, staying the patent claims (Counts 3, 4, and 5) pending the PTAB's inter partes review of U.S. Patent 10,123,074. However, the motion was denied as to the remaining state law claims (Counts 1 and 2 for trade-secret misappropriation, and Count 6 for breach of contract), which were not stayed. The order specified that the stay on patent claims would remain until the PTAB issues its inter partes review decisions.

Current Posture (as of 2026-06-15):

  • The patent infringement claims (Counts 3, 4, and 5) in the district court litigation are currently stayed, awaiting the outcome of the inter partes review proceedings at the PTAB.
  • The state law claims (Counts 1, 2, and 6) are not stayed and presumably continue to proceed.
  • Motions for Summary Judgment and motions to Strike/Exclude Testimony are currently pending.
  • A trial is set for March 2026; however, the status of this date for the patent claims is uncertain given the ongoing stay for those claims.

Parallel PTAB IPR Proceedings:

  • Multiple inter partes review (IPR) petitions were filed against US Patent 10,123,074 by Stingray and other defendants around December 24, 2024.
  • The PTAB has commenced an inter partes review of all claims of the asserted patents, which was a key factor in the district court's decision to stay the patent claims.
  • One identified IPR proceeding related to this case is IPR2025-00351.
  • IPR proceedings typically aim to challenge the validity of a patent based on anticipation or obviousness using prior art in patents and printed publications. They generally have a lower burden of proof than district court litigation ("preponderance of the evidence" versus "clear and convincing evidence") and a faster timeline, with a final written decision due within 12 to 18 months of institution.

The outcome of the PTAB IPRs will significantly impact the patent claims in the district court case, potentially simplifying or resolving the invalidity issues.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Based on available information, Dr. Edwin A. Hernandez and EGLA Corp., the plaintiffs in this patent infringement case, were initially represented by attorneys from Jeffer Mangels Butler & Mitchell LLP and GrayRobinson. However, court documents indicate a change in representation, with plaintiffs' counsel being terminated in April 2025, leading to a temporary stay of the case.

Prior to this termination, a mandatory notice filed in a related Patent Trial and Appeal Board (PTAB) proceeding, dated March 19, 2025, identified the following counsel for the patent owner, Dr. Edwin A. Hernandez-Mondragon and EGLA Corp.:

  • Gregory S. Cordrey

    • Role: Lead Counsel
    • Firm: Jeffer Mangels Butler & Mitchell LLP
    • Office Location: Irvine, CA
    • Experience Note: Named as lead counsel for the patent owner in a PTAB IPR related to the asserted patent in this district court case.
  • Stanley M. Gibson

    • Role: Back-Up Counsel (pro hac vice admission pending as a provisionally recognized PTAB attorney)
    • Firm: Jeffer Mangels Butler & Mitchell LLP
    • Office Location: Los Angeles, CA
    • Experience Note: Named as back-up counsel for the patent owner in a PTAB IPR related to the asserted patent.

It's important to note that the termination of plaintiffs' counsel occurred on April 24, 2025, after the PTAB filing. Without more recent docket entries explicitly naming current counsel for the plaintiffs in the district court case, the status of their representation remains in flux following the aforementioned termination. Dr. Hernandez initially filed the complaint pro se before securing legal representation.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

The following attorneys have been identified as counsel of record for the defendants in Dr. Edwin A. Hernandez et al. v. Stingray Digital Group Inc. et al. (Case No. 1:24-cv-21226):

For Stingray Digital Group Inc. and Stingray Music USA, Inc.:

  • Masood Anjom
    • Role: Counsel for Petitioners in IPR proceedings related to the case.
    • Firm: Alavi & Anaipakos PLLC, Houston, TX.
    • Note: Represents Stingray Group Inc. and Stingray Music USA, Inc. in IPR proceedings at the PTAB.

For MOOD MEDIA:

  • Elio F. Martinez, Jr.
    • Role: Counsel of record.
    • Firm: Appears to be associated with Mood Media through docket entries. Further firm details were not immediately available through direct search results.
    • Note: Involved in motions to strike/exclude testimony and opinions in this case.

For AT&T:

  • Harvey W. Gurland, Jr.

    • Role: Counsel of record.
    • Firm: Further firm details were not immediately available through direct search results.
    • Note: Represents AT&T, Inc.
  • Nikhil Marathe

    • Role: Director of Intellectual Property - AT&T (in-house).
    • Firm: AT&T.
    • Note: Responsible for developing and implementing patent business strategies and maximizing the value of AT&T's Intellectual Property assets.
  • Jason Chang

    • Role: Head of Patent Program - AT&T (in-house).
    • Firm: AT&T.
    • Note: Focuses on legal technology and innovation in intellectual property.

For Blue Stream Fiber:

  • Julie Plowman
    • Role: General Counsel (in-house).
    • Firm: Blue Stream Fiber.
    • Note: Brings over 25 years of legal leadership and experience in the telecom industry, focusing on strategic sales, contracts management, mergers and acquisitions, and employment law.

It is important to note that specific roles like "lead counsel" or "local counsel" are not always explicitly stated in publicly available docket information. The roles provided are based on available information and common practices in patent litigation.