DCT
2:23-cv-01967
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: 2:23-cv-01967, D. Ariz., 09/19/2023
- Venue Allegations: Plaintiff alleges venue is proper in the District of Arizona because Defendant asserts a "global presence" that includes Scottsdale, Arizona, and the address for Defendant's CEO is located in Scottsdale.
- Core Dispute: Plaintiff alleges that Defendant’s online advertising services infringe a patent related to methods for ensuring an advertisement is within a user's viewable browser area before it is rendered.
- Technical Context: The technology addresses the problem of "ad viewability" in the digital advertising market, a key metric for determining whether an advertiser should pay for an ad impression.
- Key Procedural History: The complaint notes that the patent-in-suit and related patents in its family have previously overcome patent eligibility rejections under 35 U.S.C. § 101 during prosecution. Specifically, it cites a 2018 PTAB decision (Ex Parte Brad Krassner) that found related claims patent-eligible, a decision which was subsequently relied upon by examiners to allow other related applications, including the one that issued as the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-24 | ’482 Patent Priority Date |
| 2018-12-18 | PTAB decision in Ex Parte Brad Krassner cited in complaint |
| 2023-03-29 | Notice of Allowance for the ’482 Patent |
| 2023-08-29 | ’482 Patent Issue Date |
| 2023-09-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,741,482 - System and Method for Creation, Distribution and Tracking of Advertising Via Electronic Networks
- Patent Identification: U.S. Patent No. 11,741,482, issued August 29, 2023.
The Invention Explained
- Problem Addressed: In online advertising, content pages are often longer than the viewable screen area, meaning ads placed on the page may never be scrolled into view by a user. This creates a challenge for advertisers who do not want to pay for unseen ads and for publishers who need to prove ad viewability (Compl. ¶¶9-10). The patent describes this as a need to solve an "unresolved technical problem" of advertising that was "never actually displayed or seen by consumers" (Compl. ¶21).
- The Patented Solution: The invention is a method where the system first determines if a "predefined area" for an ad on a webpage is within the "visible area of the browser window" (Compl. ¶11). Only in response to this determination does a user's device send a communication to "dispatcher servers," which then serve the advertisement content to be rendered in that now-visible area (’482 Patent, col. 7:16-43). The complaint uses Figure 51 from the patent to illustrate the technical environment, showing how a large "Content page" (21) is only partially visible within the "Browser window" (41) on a "Computer Screen" (31) (Compl. ¶12). This ensures that an ad is requested and loaded only when it is actually positioned to be seen by the user.
- Technical Importance: The complaint asserts that this technology represented a "giant step forward for the industry" by creating a new standard for accountability in online advertising (Compl. ¶35).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 3, 4, and 6 (’482 Patent, col. 59:55-62:22; Compl. ¶38).
- Essential elements of independent claim 1 include:
- A method for rendering advertisement content on a scrollable ad content display page containing a predefined ad area.
- Determining if a predefined portion of the ad area is within the visible area of the browser window.
- In response to that determination, causing a communication to be sent from the user's remote computing device to one or more "dispatcher servers."
- The dispatcher servers receive the communication and cause the ad content to be served to the user's device.
- A key timing limitation: "the advertisement content first appears in the predefined area of the ad content display page only after the one or more dispatcher servers serve the advertisement content."
III. The Accused Instrumentality
Product Identification
Defendant's "Highly Viewable Ad Exchange ('HVAX')" and "Viewability as a Service ('VaaS')" products and services (collectively, the "Infringing Service") (Compl. ¶39).
Functionality and Market Context
The complaint does not provide specific technical details about how the accused HVAX and VaaS products operate. It alleges that these services perform the method recited in the asserted claims (Compl. ¶39). The complaint includes a diagram, labeled Figure 51 from the patent, illustrating the nested relationship between a large content page, a smaller computer display area, and an even smaller browser window viewport (Compl. ¶12, p. 4). This figure is used to explain the general technical problem the patent addresses, rather than to depict the accused instrumentality's specific operation.
IV. Analysis of Infringement Allegations
The complaint does not provide a detailed claim chart. The infringement theory is presented by quoting the asserted claims and alleging that Defendant’s HVAX and VaaS services perform the claimed method (Compl. ¶39).
’482 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Ref. | Patent Ref. |
|---|---|---|---|
| A method for rendering advertisement content in an ad content display page, wherein the ad content display page includes (i) a predefined area configured to display advertisement content... and (ii) page content displayed in other portions of the ad content display page... the ad content display page being scrollable to allow a portion of the ad content display page to appear in a visible area of a browser window... | The complaint alleges that the HVAX and VaaS services constitute a method for rendering advertisement content as described. | ¶39 | col. 7:16-25 |
| (a) determining whether a predefined portion of the predefined area of the ad content display page is in the visible area of the browser window; and | The HVAX and VaaS services are alleged to determine if the ad area is in the visible browser window. | ¶39 | col. 8:1-2 |
| (b) in response to a determination... causing a communication to be sent from the remote computing device to one or more dispatcher servers, wherein the one or more dispatcher servers are configured to: (i) receive the communication, and (ii) cause advertisement content to be served... | The HVAX and VaaS services are alleged to cause this responsive communication to be sent to servers that then serve the ad content. | ¶39 | col. 11:58-63 |
| wherein the advertisement content first appears in the predefined area of the ad content display page only after the one or more dispatcher servers serve the advertisement content to the remote computing device and the browser renders the advertisement content in the predefined area of the ad content display page. | The HVAX and VaaS services are alleged to follow this specific timing sequence, where the ad is not rendered until after it is served in response to the viewability determination. | ¶39 | col. 7:12-16 |
Identified Points of Contention
- Scope Questions: The complaint's allegations are conclusory and do not specify how the accused services operate. A central question will be whether the HVAX and VaaS services actually implement the strict "determine, then communicate, then serve, then render" sequence required by the claim. The "only after" limitation may be a focal point of dispute if the accused technology involves any form of pre-fetching or placeholder content that exists before the server communication.
- Technical Questions: What evidence does the complaint provide that the accused services perform the specific step of "determining" viewability before initiating a request for ad content? The complaint lacks any source code, network traffic analysis, or other technical evidence to support its allegations, raising the question of how Plaintiff will prove this element of the claimed method is met.
V. Key Claim Terms for Construction
The Term: "dispatcher servers"
- Context and Importance: This term defines a key architectural element of the claimed system. The outcome of the infringement analysis may depend on whether this term is given a broad, functional definition or is limited to the more specific server architecture described in the patent's specification. Practitioners may focus on this term because its scope could determine whether modern, distributed cloud architectures fall within the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not impose structural limitations beyond being "configured to: (i) receive the communication, and (ii) cause advertisement content to be served." A party could argue this functionally covers any server or system of servers that performs these two actions in response to the viewability trigger.
- Evidence for a Narrower Interpretation: The specification describes a "central dispatcher server" that performs a host of functions, including managing auctions, storing ad data files, and executing commands (’482 Patent, col. 3:28-40). A party could argue that "dispatcher servers" should be construed to require these additional functions, potentially narrowing the claim scope to exclude more generic ad-serving systems.
The Term: "wherein the advertisement content first appears... only after"
- Context and Importance: This negative limitation defines the required temporal sequence of events and appears to be a key aspect of the invention's novelty over prior art. Infringement will likely hinge on whether the accused system strictly adheres to this timing, where the ad is completely absent until after the viewability-triggered server response.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that "first appears" should be interpreted flexibly, allowing for the existence of non-visible placeholders or scripts before the trigger, as long as the visual "advertisement content" itself is not rendered to the user until after the server call. The specification describes the activation of a "billboard module" which could be interpreted as a pre-existing component (’482 Patent, col. 7:12-16).
- Evidence for a Narrower Interpretation: The plain language "only after" suggests a strict, unambiguous sequence. A party will likely argue this language forbids any pre-loading or pre-fetching of the ad content into the browser's memory or DOM before the viewability check and subsequent server communication are completed. The complaint emphasizes this inventive concept, stating the ad is rendered only when a determination has been made that the area "has been in view" (Compl. ¶33).
VI. Other Allegations
Willful Infringement
The complaint alleges that Defendant's infringement is willful. This allegation is based on the assertion that Defendant had knowledge of the patents in the ’482 patent family, purportedly evidenced by Defendant’s "copying of a drawing in RMC's patents" (Compl. ¶41). This alleges pre-suit knowledge of the patented technology, if not the specific patent-in-suit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary evidentiary question will be one of operational sequence: can Plaintiff produce technical evidence demonstrating that the accused HVAX and VaaS services adhere to the strict temporal limitation of claim 1, where ad content "first appears... only after" a viewability check triggers a server response? The lack of specific factual allegations in the complaint suggests this will be a central focus of discovery.
- A key legal issue will be one of claim scope: will the term "dispatcher servers" be construed broadly to encompass any modern ad-serving architecture, or will it be limited by the specification's detailed embodiments to a more specific type of server system? The answer could be dispositive for infringement.
- A potential threshold question for the court will be the sufficiency of the complaint's allegations. Given the absence of detailed factual support tying the accused products to the specific elements of the asserted claims, the court may need to consider whether the complaint meets the plausibility standard for patent infringement pleading.