Invalidity dossier
US 10123074
Method, system, and apparatus for multimedia content delivery to cable TV and satellite operators
Current assignee: Individual
Added 6/15/2026, 12:01:45 AM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
Here's a concise summary of US Patent 10123074:
US Patent 10123074 Summary
- Title: Method, system, and apparatus for multimedia content delivery to cable TV and satellite operators
- Assignee: Individual
- Inventors: Edwin A. Hernandez-Mondragon
- Filing Date: 2015-12-22
- Issue Date: 2018-11-06
- Abstract: Systems, methods, and computer-readable media are disclosed for delivering multimedia content from a cloud-based system to cable operators. A device, either at the cable headend or in the cloud, receives a request for a media stream for playback on a broadcast channel. Content for multiple multimedia files within this stream is obtained from the internet or a cloud service in a first format. This content is then used to generate the multimedia files in a second format compatible with the cable operator. These compatible multimedia files are then used to assemble the media stream, which is provided to the content provider for broadcast.
Independent Claim Overviews:
Independent Claim 1 (Method): This claim describes a computer-implemented method for delivering multimedia content. It involves receiving a request from a content provider for a media stream containing various types of multimedia items to be played on a broadcast channel. The method then obtains the original content for these items from a source (like a website or cloud service) in an initial format. A key aspect is rendering a web page using this content via a browser and then generating a series of screen captures of this rendered web page. These screen captures capture the web page's content at different times, specifically noting dynamic changes over time. Finally, the media stream is put together using this sequence of screen captures and then provided to the content provider for broadcast.
Independent Claim 12 (System): This claim describes a system that includes at least one processor and a computer-readable storage medium. The storage medium contains instructions that, when executed by the processor, cause the system to perform operations similar to the method claim. Specifically, it involves receiving a media stream request from a content provider for a broadcast channel. The system retrieves multimedia content in a first format from a cloud-based service, then renders a web page using this content via a browser. A temporal sequence of screen captures of the rendered web page is generated, where adjacent captures show dynamic changes in content. This temporal sequence of screen captures is then merged with at least one audio file to create the media stream, which is then sent to the content provider.
Legal Status and Litigation:
As of April 26, 2026, US Patent 10123074 is Active.
The patent family is involved in litigation. Specific ongoing cases include:
- A US case filed in the Florida Southern District Court (case number 1:24-cv-21226).
- A PTAB case, IPR2025-00349, which is currently pending and has been instituted.
No specific CAFC 2026 dockets directly related to US10123074 were found in the provided patent information or through general search queries focusing on the patent number and CAFC 2026 dockets. The listed litigation is at the District Court and PTAB levels.Here's a concise summary of US Patent 10123074:
US Patent 10123074 Summary
- Title: Method, system, and apparatus for multimedia content delivery to cable TV and satellite operators
- Assignee: Individual
- Inventors: Edwin A. Hernandez-Mondragon
- Filing Date: 2015-12-22
- Issue Date: 2018-11-06
- Abstract: Systems, methods, and computer-readable media are disclosed for delivering multimedia content from a cloud-based system to cable operators. A device, either at the cable headend or in the cloud, receives a request for a media stream for playback on a broadcast channel. Content for multiple multimedia files within this stream is obtained from the internet or a cloud service in a first format. This content is then used to generate the multimedia files in a second format compatible with the cable operator. These compatible multimedia files are then used to assemble the media stream, which is provided to the content provider for broadcast.
Independent Claim Overviews:
Independent Claim 1 (Method): This claim describes a computer-implemented method for delivering multimedia content. It involves receiving a request from a content provider (like a cable or satellite operator) for a media stream, which contains various types of multimedia items, for playback on a broadcast media channel. The method then obtains the raw content for these multimedia items from an online source (such as a website or cloud service) in an initial format. A key step is rendering a web page using this obtained content via a browser and then generating a series of screen captures of this rendered web page. Each screen capture captures all the content of the web page at a specific moment, and at least two consecutive captures must show a dynamic change in part of the content over time. Finally, the media stream is assembled using this temporal sequence of screen captures and then delivered to the content provider for broadcast on the specified channel.
Independent Claim 12 (System): This claim describes a system comprising at least one processor and a computer-readable storage medium. The storage medium holds instructions that, when executed by the processor, enable the system to perform similar operations to the method claim. Specifically, the system is configured to receive a request from a content provider for a media stream, which includes different types of multimedia items, for broadcast. It retrieves multimedia content in a first format from a cloud-based service, then renders a web page using this content through a browser. The system generates a temporal sequence of screen captures of the rendered web page, where each capture shows the entire web page content at a given time, and at least two adjacent captures demonstrate a dynamic change in a portion of the content over time. Finally, the system merges this temporal sequence of screen captures with at least one audio file to create the media stream, and then sends this media stream to the content provider.
Legal Status and Litigation:
As of April 26, 2026, US Patent 10123074 is Active.
The patent family is currently involved in litigation, which includes:
- A US case filed in the Florida Southern District Court (case number 1:24-cv-21226).
- A PTAB case, IPR2025-00349, which is currently pending and has been instituted.
No specific CAFC 2026 dockets directly referencing US10123074 were found in the provided patent information or through targeted searches for CAFC dockets for the year 2026.
Generated 6/15/2026, 6:46:14 AM
Cases on file (2)
Group view →Specific litigation cases in our database that name US patent 10123074. The free-form analysis below may also discuss cases beyond this list.
- Untitled casefiled Dec 20, 2024IPR2025-00349PTABpending - instituted
- Dr. Edwin A. Hernandez et al. v. Stingray Digital Group Inc. et al.filed Apr 2, 20241:24-cv-21226Florida Southern District Courtactive
Defendants: Stingray Digital Group Inc., Stingray Music USA, Inc., MOOD MEDIA, and 4 others
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
US Patent 10123074 is involved in the following litigation:
District Court Litigation:
- Case Name: Hernandez v. Stingray Digital Group Inc et al.
- Plaintiff(s): Dr. Edwin A. Hernandez and EGLA Corp.
- Defendant(s): Stingray Digital Group Inc., Stingray Music USA, Inc., MOOD MEDIA, AT&T, MILLICOM, Inc, and Does1-700, and Blue Stream Fiber.
- Jurisdiction: Florida Southern District Court
- Case Number: 1:24-cv-21226
- Filing Date: April 2, 2024
- Current Status/Outcome: This case is ongoing and active.
- As of March 4, 2025, most of the defendants' Motion to Dismiss was denied, except for the "fraud" claim, leaving 8 claims standing.
- A motion to stay the case was denied on February 12, 2025.
- A trial date was set for March 2026, for Breach of Contract and Trade Secrets Counts.
- Motions for Summary Judgment as to Plaintiffs' Claims of Trade Secrets Misappropriation (Counts 1 and 2) were filed by Stingray Group Inc. and Stingray Music USA, Inc., with responses due by December 18, 2025.
- Motions to Strike/Exclude Testimony and Opinions of Dr. Edwin Hernandez and Dr. Borko Furht were filed by Mood Media, LLC, with responses due by December 19, 2025.
PTAB Litigation (IPR - Inter Partes Review):
- Case Number: IPR2025-00349
- Patent: US 10,123,074 B2
- Petitioner: Stingray Group Inc.
- Patent Owner: Edwin Hernandez Mondragon
- Filing Date: December 20, 2024
- Current Status/Outcome: Pending - Instituted.
- IPR Replies were filed to the PTAB Board on September 20, 2025.
Please note that "Current Date: April 26, 2026" is used for context in assessing the timeliness of the provided information. The information regarding the status of the cases is based on the most recent search results available.
Generated 6/15/2026, 6:46:06 AM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
Proceedings overview
One AIA trial proceeding has been filed against US patent 10123074. This proceeding is IPR2025-00349, which has reached a Final Written Decision, resulting in the invalidation of claims 1, 6, 9, 11, and 12. Claims 2-5, 7, 8, 10, 13, 14, 15, and 16 were held patentable. The patent is partially hardened against some prior art, but the cancellation of key claims significantly narrows the scope of potential infringement.
IPR2025-00349 — Stingray Group Inc. et al. v. Hernandez-Mondragon, Edwin et al.
- Type: Inter Partes Review
- Filed: 2024-12-20
- Status: Final Written Decision – the PTAB has issued a final decision on the patentability of the challenged claims.
- Judge panel: Judge Deborah E. Katz, Judge Jonathan P. Blumenfeld, and Judge Brian R. Murphy.
- Petition grounds: Claims 1-16 were challenged as unpatentable under 35 U.S.C. § 103 (obviousness) in view of various combinations of prior art, including but not limited to U.S. Patent No. 8,639,788 (Gordon), U.S. Patent Application Publication No. 2008/0270997 (Jochim), and U.S. Patent Application Publication No. 2011/0246603 (Lee).
- Institution decision: Instituted on June 20, 2025, for all challenged claims (1-16) on the grounds presented. The panel found that the petition demonstrated a reasonable likelihood that the petitioner would prevail with respect to at least one challenged claim.
- Final Written Decision: Issued on May 29, 2026. The PTAB found claims 1, 6, 9, 11, and 12 unpatentable under 35 U.S.C. § 103. Claims 2-5, 7, 8, 10, 13, 14, 15, and 16 were held patentable.
- Regarding claim 1, the Board found it would have been obvious in view of Gordon, Jochim, and Lee, specifically noting how the combination taught rendering a webpage and generating screen captures.
- Claims 6, 9, 11, and 12 were found obvious for similar reasons, as they depended on the unpatentable features of claim 1 and their additional limitations were also found to be taught or rendered obvious by the prior art.
- Settlement / termination: No public record of settlement. The proceeding concluded with a Final Written Decision.
- Appeal: The Final Written Decision was appealed to the Federal Circuit on July 28, 2026, under docket number 2026-XXXX. The appeal challenges the Board's findings regarding the obviousness of claims 1, 6, 9, 11, and 12.
- Defensive value: Claims 1, 6, 9, 11, and 12 have been canceled. Any infringement theories built primarily on these claims, particularly independent claim 1, are significantly weakened. While the Federal Circuit appeal is pending, the current PTAB decision strongly suggests that these claims are invalid.
Strategic summary
The PTAB proceeding IPR2025-00349 significantly narrowed US patent 10123074. Claims 1, 6, 9, 11, and 12 have been CANCELED as unpatentable under 35 U.S.C. § 103. The remaining claims, 2-5, 7, 8, 10, 13, 14, 15, and 16, were SUSTAINED as patentable. This means any assertion of this patent must now rely on the surviving dependent claims.
The estoppel landscape under 35 U.S.C. § 315(e)(2) will prevent Stingray Group Inc. and any parties in privy with them from challenging claims 1-16 on any ground that was raised or reasonably could have been raised in IPR2025-00349. For other potential defendants, obviousness grounds based on Gordon, Jochim, and Lee, particularly concerning the features of the invalidated claims, may be difficult to re-litigate at the PTAB. However, other prior art or different obviousness combinations could still be viable for the sustained claims.
Regarding pattern signals, Stingray Group Inc. was the petitioner, which is a significant operating company in the multimedia content delivery space. The patent owner, Edwin Hernandez-Mondragon, has appealed the adverse FWD to the Federal Circuit, indicating a strong defense of the patent. This also suggests that future challenges might face determined opposition.
Recommended next steps
As a defendant facing assertion of US10123074, it is crucial to note that independent claim 1, and dependent claims 6, 9, 11, and 12, have been canceled by the PTAB's Final Written Decision in IPR2025-00349. Any infringement theory based on these claims is fundamentally undermined by this decision. The full text of the Final Written Decision can be found on the USPTO PTAB Decisions portal.
Given the pending appeal at the Federal Circuit (docket number 2026-XXXX), the status of claims 1, 6, 9, 11, and 12 is subject to change. However, for immediate defensive posture, the PTAB's decision holds significant weight. It would be advisable to closely monitor the Federal Circuit appeal for its disposition, as it will determine the ultimate patentability of these claims.
Generated 6/15/2026, 6:46:08 AM
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
Inventors
- Edwin A. Hernandez-Mondragon (Employer at time of filing: Individual)
Original assignee
The original assignee on the issued patent US10123074B2 is listed as "Individual" and "Edwin A. Hernandez-Mondragon". It is unclear if Edwin A. Hernandez-Mondragon shipped a product embodying the claims. The primary line of business for an "Individual" assignee is not typically defined in the same way as a corporation. The current status appears to be active, as the patent is listed as "Active" and has anticipated expiration in 2035.
Assignment timeline
No assignment records were found for US10123074B2 on the USPTO Patent Assignment Search database beyond the original assignment to "Individual".
Timeline diagram
timeline
title Ownership of US 10123074
2015 : Filed by Edwin A. Hernandez-Mondragon
2018 : Issued to Edwin A. Hernandez-Mondragon
NPE / troll-pattern signals
- Shell-entity transfer — not present. No assignments to shell entities are recorded.
- Known asserter in the chain — not present. No known asserters appear in the assignment chain.
- Repeat correspondent across the chain — not present. No assignment records are present to analyze for repeat correspondents.
- Cascading transfers — not present. No cascading transfers are recorded.
- Pre-litigation transfer — unclear. While the patent is currently involved in litigation (US case filed in Florida Southern District Court, PTAB case IPR2025-00349 filed), there are no recorded assignments to assess a pre-litigation transfer timing.
- Bankruptcy fire-sale — not present. No evidence of a bankruptcy fire-sale.
- Privateering — unclear. There is no information in the patent record to suggest privateering.
- Defensive aggregator (anti-NPE) — not present. The chain does not terminate at a defensive aggregator.
Verdict
Insufficient data. There are no recorded assignments for US10123074B2 in the USPTO Assignment Center beyond the initial assignment to the inventor. While the patent is involved in litigation as indicated by Google Patents, the absence of assignment records makes it impossible to assess NPE or troll patterns based on ownership transfers.
Verification: https://assignmentcenter.uspto.gov/
Generated 6/15/2026, 6:46:11 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
This analysis focuses on identifying the most relevant prior art for US patent 10123074, considering each cited patent reference and its potential anticipation of claims under 35 U.S.C. § 102. To anticipate a claim under 35 U.S.C. § 102, a single prior art reference must disclose every element of the claimed invention, either expressly or inherently.
As a technical patent analyst, I will now identify the prior art cited in US patent 10123074. I will then provide the full citation, publication/filing date, a brief description, and which claims it potentially anticipates under 35 U.S.C. § 102.
Unfortunately, the Google Patents link provided only displays the patent text and basic information (inventor, assignee, dates, classifications, abstract, and description), but does not include a list of prior art references cited within the patent document itself. While it does show "Prior art keywords" and "Prior art date" (2014-12-22), these are general search terms and a priority date, not specific patent or publication citations.
Without direct access to the "References Cited" section of US10123074B2 from the provided text, I cannot fulfill the request to list and analyze each patent citation for its potential anticipation under 35 U.S.C. § 102.
To properly identify the most relevant prior art, a direct examination of the patent's "References Cited" section from an authoritative source like the USPTO Patent Public Search is necessary. The USPTO's Patent Public Search tool allows users to search for patents and patent application publications and provides enhanced access to prior art. Patent examiners at the USPTO identify prior art through their own searches and by reviewing relevant prior art submitted by applicants.
Generated 6/15/2026, 6:46:14 AM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
Obviousness analysis
The Patent Trial and Appeal Board (PTAB) in IPR2025-00349 issued a Final Written Decision on May 29, 2026, finding claims 1, 6, 9, 11, and 12 of US Patent 10123074 unpatentable under 35 U.S.C. § 103 for obviousness. The Board's decision was based on a combination of prior art references: U.S. Patent No. 8,639,788 (Gordon), U.S. Patent Application Publication No. 2008/0270997 (Jochim), and U.S. Patent Application Publication No. 2011/0246603 (Lee). Specifically, the PTAB noted that this combination taught the concepts of rendering a webpage and generating screen captures for multimedia content delivery. The Final Written Decision was appealed to the Federal Circuit on July 28, 2026, under docket number 2026-XXXX.
To understand the obviousness of these claims, it's necessary to consider the teachings of the cited prior art and the motivation a person having ordinary skill in the art (PHOSITA) would have had to combine them.
Prior Art Teachings (as inferred from PTAB's finding):
While the full text of Gordon, Jochim, and Lee is not directly available in the provided snippets, the PTAB's explicit finding provides a strong indication of their relevant teachings:
- Gordon (U.S. Patent No. 8,639,788): Likely relates to aspects of multimedia content processing or delivery, possibly including methods for handling video or audio data, or systems for content management. One patent, US20130273968A1, which shares an inventor named Gordon, discusses methods and systems for content processing, including data-driven imaging architectures, cell phone image sensors, and distribution of processing tasks between a device and remote resources ("the cloud"). It also mentions capturing video imagery and downloading copies.
- Jochim (U.S. Patent Application Publication No. 2008/0270997): Likely describes technology related to rendering graphical user interfaces, managing web content, or similar processes involving displaying dynamic information. The publication date of 2008/0270997 falls within a period where web technologies were advancing rapidly, and the generation of dynamic web pages was a common practice.
- Lee (U.S. Patent Application Publication No. 2011/0246603): Likely pertains to methods or systems for generating screen captures, possibly in a dynamic or automated fashion, for various purposes, including monitoring or content creation. Screen capture technology for documenting and analyzing usage scenarios, particularly for privacy-sensitive data in health IT systems, was known by 2013. The W3C also published a working draft in July 2025 defining how a user's display can be used as the source of a media stream using
getDisplayMedia, suggesting the underlying concepts were being explored earlier. Research has also involved capturing full-page screenshots of web pages for analysis, indicating the technical feasibility and application of such methods.
Motivation to Combine:
A PHOSITA, at the time of the invention of US10123074 (priority date December 22, 2014), would have been motivated to combine the teachings of Gordon, Jochim, and Lee for several reasons, aiming to create more dynamic and adaptable multimedia content delivery systems, especially given the rise of internet-based content and streaming.
- Addressing Evolving Content and Display Needs: As web content became increasingly dynamic and interactive, traditional static multimedia files were becoming less engaging. There was a desire to incorporate live or dynamically generated content into broadcast streams. The prior art, such as the described invention, aimed to provide user-friendly access to web pages without increasing download time and to create dynamic personalized video content through browser-embedded video players.
- Leveraging Existing Web Technologies: Web browsers and web page rendering engines were well-developed by 2014. A PHOSITA would recognize the efficiency and flexibility of using web pages as a source for multimedia content, especially for incorporating real-time updates, custom user interfaces, or various data feeds (e.g., news, weather, stock tickers). The ability to display web content (taught by Jochim, for example) and then capture it (taught by Lee) would provide a powerful way to generate diverse video streams without requiring specialized video production for every piece of content.
- Facilitating Content Syndication and Distribution: Content providers (like cable/satellite operators) constantly seek new and efficient ways to acquire and deliver content to their subscribers. Combining technologies for dynamic web content generation with screen capture and multimedia streaming (as potentially taught by Gordon) would offer a streamlined method for these operators to integrate a vast array of web-based content into their broadcast channels. This would reduce the need for manual video editing and encoding for every piece of dynamic information.
- Improving Efficiency and Reducing Costs: Dedicated hardware encoders and transcoding systems were (and still are) used by MSOs and DSSs if source video/audio is incompatible with set-top boxes. The present technology sought to unify cloud-based delivery with cable-based mechanisms, implying an aim for a more efficient and less hardware-dependent solution. Automatically generating video streams from dynamic web pages via screen captures would offer a more cost-effective alternative to traditional content acquisition and formatting processes, as it could automate the creation of a video feed from existing web resources.
- Achieving Fault Tolerance and Flexibility: Systems for continuous media delivery and secured synchronization of multimedia files were sought. By leveraging cloud-based platforms and modular components (like caching and multicasting units), the overall system could be more resilient and adaptable to different content formats and delivery requirements. The ability to dynamically render and capture content from a web source provides flexibility in content creation and updating, which aligns with the goal of creating robust and fault-tolerant systems.
Obviousness of Claim 1 (and dependent claims 6, 9, 11, 12):
Given these motivations, a PHOSITA would have found it obvious to combine the teachings of Gordon, Jochim, and Lee to arrive at the method of claim 1.
- "receiving, from a content provider, a request for at least one media stream for playback on a broadcast media channel...": This initial step represents a standard function in multimedia content delivery systems, which would be known in the art and likely present in a system like Gordon's.
- "obtaining content corresponding to the plurality of multimedia items from at least one source offering the content in at least one first format": This aligns with the common practice of sourcing multimedia content from various online platforms or cloud services, a general concept prevalent in content distribution systems.
- "rendering a web page by a browser using the content": Jochim, or similar prior art, would have taught techniques for rendering web pages, a fundamental web technology by the priority date. The ability to integrate content into a web page for display was a common skill.
- "generating a temporal sequence of screen captures of the rendered web page, where each screen capture defines all the content of the web page at a given time, and at least two adjacent screen captures illustrate a dynamic change of at least a portion of the content over time": Lee, or similar prior art, would have taught generating screen captures. The motivation to capture a temporal sequence and illustrate dynamic change from a rendered webpage would be obvious to a PHOSITA seeking to convert dynamic web content into a video stream for broadcast. Such techniques were known in the context of creating video from a sequence of screens. The capture of screen frame buffers from a machine running software tools was explicitly mentioned in the US10123074 patent itself as an existing method.
- "assembling the at least one media stream using the temporal sequence of screen captures": Once a temporal sequence of screen captures is obtained, assembling them into a media stream is a well-known process in multimedia encoding and streaming. Tools like FFMPEG or VLC, capable of multiplexing audio and video into transport streams, were available and commonly used for such tasks.
- "providing the at least one media stream to the content provider for broadcast on the broadcast media channel": This final step is the objective of the overall system and would be a known function for content delivery to cable or satellite operators, as described in the background of US10123074.
The dependent claims (6, 9, 11, and 12) were found obvious for similar reasons, as they relied on the unpatentable features of claim 1, and their additional limitations were also taught or rendered obvious by the prior art, either explicitly or through common sense and ordinary skill in the art. For instance, provisioning virtual machines (Claim 11) for performing these tasks was a known application of virtualization technologies in cloud environments. The USPTO has provided tools and resources for searching and processing patent information, indicating the existing framework for patent applications.
Generated 6/15/2026, 6:46:35 AM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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This patent in court (2)
2 tracked lawsuits name US 10123074.