DCT
2:22-cv-02086
Rich Media Club LLC v. Duration Media LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rich Media Club LLC (Florida)
- Defendant: Duration Media LLC (Delaware)
- Plaintiff’s Counsel: GLOBAL IP LAW GROUP, Group
- Case Identification: 2:22-cv-02086, D. Ariz., 02/17/2023
- Venue Allegations: Venue is alleged to be proper in the District of Arizona because the Defendant, while having a "global presence," maintains its only known U.S. address in Scottsdale, Arizona, which is purported to be the address of its Chief Executive Officer.
- Core Dispute: Plaintiff alleges that Defendant’s online advertising exchange and viewability services infringe a patent related to methods for determining when an online advertisement is viewable and dynamically replacing it with a new advertisement.
- Technical Context: The technology operates within the digital advertising sector, addressing the challenge of verifying that advertisements are actually displayed to users and creating new opportunities to monetize ad space by replacing ads after they have been viewed.
- Key Procedural History: The complaint emphasizes the prosecution history of the patent family, noting that the PTAB reversed a § 101 patent-eligibility rejection for a grandparent patent application. The plaintiff asserts that this history, which was cited by the examiner during prosecution of the patent-in-suit, supports the validity and patent-eligibility of the asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-24 | '329 Patent Priority Date (Provisional App. 60/753,536) |
| 2018-12-18 | PTAB decision in Ex Parte Brad Krassner (related application) |
| 2022-09-13 | '329 Patent Issue Date |
| 2023-02-17 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 11,443,329, "System and Method for Creation, Distribution and Tracking of Advertising Via Electronic Networks," issued September 13, 2022.
The Invention Explained
- Problem Addressed: The patent and complaint describe a fundamental challenge in online advertising: advertisers often pay for ads that are never actually seen by consumers because they are located "below the fold" or on parts of a webpage that a user never scrolls to (Compl. ¶¶ 9-10). This creates difficulty in verifying ad delivery and results in inefficient monetization of web page real estate (Compl. ¶10; ’329 Patent, col. 2:23-34).
- The Patented Solution: The invention is a system and method that determines when a "pre-defined area" of an ad content page is actually "in view within the visible area of a browser window" for a certain amount of time (’329 Patent, col. 68:47-62). Once this viewability condition is met, the system can trigger a communication to a "dispatcher server," which in turn causes a "replacement advertisement" to be selected and served to the user's browser, replacing the original ad (’329 Patent, col. 68:63-69:6). This process is designed to be transparent to the user and does not require special software installation on the user's computer (Compl. ¶17). The complaint references the patent's Figure 51 to illustrate the core technical environment, showing a viewable browser window as a subset of a larger content page (Compl. ¶12).
- Technical Importance: The technology is presented as a specific solution to a "network-centric challenge" by enabling more accurate ad viewability tracking and creating a new mechanism for monetizing already-viewed ad space, which had no direct pre-Internet equivalent (Compl. ¶33).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 3, and 5 (Compl. ¶46).
- Independent Claim 1 of the ’329 Patent recites a method with the following key elements:
- Determining whether a predefined area of an ad content display page used to display an advertisement is in view within a visible area of a browser window.
- The ad content display page includes both the predefined area for the ad and separate page content.
- In response to determining the ad has been in view for a "predefined period of time," causing a communication to be sent to one or more "dispatcher servers."
- The dispatcher servers are configured to receive the communication, cause a replacement advertisement to be selected, and cause the replacement to be served to the remote device.
- The browser is configured to render the replacement advertisement in the predefined area.
III. The Accused Instrumentality
Product Identification
- Defendant’s "Highly Viewable Ad Exchange ("HVAX")" and "Viewability as a Service ("VaaS")" products and services (Compl. ¶46).
Functionality and Market Context
- The complaint alleges that the accused services implement a method of replacing a "first print" ad with a "second print" ad on a webpage (Compl. ¶47). This replacement is allegedly triggered after an original ad "completes its required 30 seconds served on a page," at which point a communication is sent to Defendant's servers (Compl. ¶48). These servers are then alleged to run an auction to select the replacement ad and serve it to the user's device for display (Compl. ¶49). The complaint provides a diagram, Figure 51, which illustrates the spatial relationship between a larger content page (21), a computer screen display area (31), and a smaller, viewable browser window (41) (Compl. ¶12, p. 5).
IV. Analysis of Infringement Allegations
'329 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) determining whether a predefined area of an ad content display page that is used to display an advertisement is in view within a visible area of a browser window... | The accused services determine an ad is viewable before replacing it with a "second print" ad, relying on inventory known to be "highly viewable" based on industry standards. | ¶¶47-48 | col. 50:49-57 |
| (b) in response to a determination that the predefined area that is used to display the advertisement has been in view within the visible area of the browser window for a predefined period of time, causing a communication to be sent to one or more dispatcher servers... | After an ad completes a "required 30 seconds served on a page," a communication is sent to Defendant's servers. | ¶48 | col. 51:1-17 |
| wherein the one or more dispatcher servers are configured to: (i) receive the communication; (ii) cause a replacement advertisement to be selected for display on the ad content display page; and (iii) cause the replacement advertisement to be served to the remote computing device; | Upon receiving the communication, Defendant's servers are allegedly configured to "run an auction to select an ad for display on the page and to send the winning ad to the user’s device for display." | ¶49 | col. 4:35-43 |
| wherein the browser is further configured to render the replacement advertisement in the predefined area. | The accused services allegedly replace the "first print" ad with a "second print" ad in the same area. | ¶50 | col. 9:18-24 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "dispatcher servers" as used in the patent reads on the "Duration Media servers" as alleged in the complaint (Compl. ¶49). The patent specification describes a particular system architecture involving dispatcher servers and ad content servers, and the court may need to determine if the accused system's architecture maps onto the claimed configuration ('329 Patent, Fig. 1).
- Technical Questions: The complaint alleges the triggering event is an ad completing "its required 30 seconds served on a page" (Compl. ¶48). A key technical question is whether "served on a page" for a duration is functionally equivalent to the claim limitation requiring the ad to be "in view within the visible area of the browser window for a predefined period of time." Evidence will be required to show how the accused system technically measures this condition.
V. Key Claim Terms for Construction
The Term: "predefined period of time"
- Context and Importance: This term is critical for infringement, as it defines the temporal condition that must be met before a replacement ad is triggered. The dispute may focus on whether the accused system's trigger (e.g., a 30-second timer) meets the definition as constrained by the surrounding claim language.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the term is not inherently restrictive to a specific duration or method of measurement. The specification discusses determining "how long the ad was presented" and tracking view time, which may support the view that any set duration of viewability satisfies the limitation ('329 Patent, col. 10:1-17, col. 58:38-42).
- Evidence for a Narrower Interpretation: The claim explicitly links the "predefined period of time" to the ad having "been in view within the visible area of the browser window." A party could argue this requires the time to be measured based on actual screen visibility, not merely the time an ad has been loaded or "served on a page," as the complaint alleges (Compl. ¶48).
The Term: "dispatcher server(s)"
- Context and Importance: The claims assign specific functions—receiving a communication, causing an ad to be selected, and causing it to be served—to this component. Practitioners may focus on this term because infringement depends on whether the defendant's server infrastructure performs the role of the "dispatcher server" as contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that "dispatcher server" is a functional term for any server that receives a trigger and coordinates the delivery of a replacement ad, consistent with the complaint's allegation that "Duration Media servers" fulfill this role (Compl. ¶49).
- Evidence for a Narrower Interpretation: The specification depicts "Dispatcher Server 126" as a distinct component that communicates with "Ad Content File Server(s) 125" and a user's computer ('329 Patent, Fig. 1, col. 20:1-20). A party could argue that the term is not generic and must be construed in light of this disclosed architecture, potentially requiring a specific type of server that is functionally distinct from a server that merely stores ad content.
VI. Other Allegations
- Indirect Infringement: The complaint does not include a specific count for indirect or contributory infringement. The allegations focus on direct infringement by the defendant through its own services (Compl. ¶45).
- Willful Infringement: The complaint alleges willful infringement, asserting that Defendant had knowledge of the patent family prior to the suit. The primary factual basis alleged for this knowledge is Defendant's purported "copying of a drawing in RMC's patents" (Compl. ¶55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and evidentiary proof: can the plaintiff demonstrate that the accused system's trigger—an ad being "served on a page" for a set time—is technically equivalent to the patent's requirement that an ad be "in view within the visible area of the browser window" for a "predefined period of time"?
- A second key question will be one of definitional scope: does the architecture of Defendant's advertising platform, particularly its server configuration, meet the specific limitations of a "dispatcher server" as that term is defined by the intrinsic evidence of the ’329 patent?
- Finally, the case may involve a threshold battle over patent eligibility under § 101. Despite the plaintiff's arguments based on prosecution history, a court will have to determine whether the claims are directed to a patent-ineligible abstract idea (such as the commercial practice of replacing advertisements) or to a specific, technological improvement to computer network functionality.