DCT
3:17-cv-02107
Free Stream Media Corp v. Alphonso Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Free Stream Media Corp. d/b/a Samba TV (Delaware)
- Defendant: Alphonso Inc. (Delaware), Ashish Chordia, Raghu Kodige, and Lampros Kalampoukas
- Plaintiff’s Counsel: Tensegrity Law Group, LLP
- Case Identification: 3:17-cv-02107, N.D. Cal., 08/11/2017
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of California because Defendant Alphonso Inc. has a regular and established place of business and has committed acts of patent infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s cross-screen advertising platform infringes patents related to identifying content viewed on a television and using that information to deliver targeted advertising to a user’s other connected devices.
- Technical Context: The technology at issue, Automatic Content Recognition (ACR), enables the linking of television viewing habits with digital advertising ecosystems, a commercially significant capability in the modern media landscape.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of both patents-in-suit. Knowledge of the ’668 Patent is alleged as of June 17, 2015. Knowledge of the ’356 Patent is alleged as of July 5, 2016, the date Plaintiff filed a prior lawsuit against Defendant for infringement of that patent. These allegations form the basis for claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2012-05-26 | Earliest Priority Date for ’668 and ’356 Patents |
| 2015-05-05 | U.S. Patent No. 9,026,668 Issued |
| 2015-06-17 | Defendant’s Alleged First Notice of ’668 Patent |
| 2016-07-05 | U.S. Patent No. 9,386,356 Issued |
| 2016-07-05 | Defendant’s Alleged First Notice of ’356 Patent |
| 2017-08-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,026,668 - "Real-Time and Retargeted Advertising on Multiple Screens of a User Watching Television"
The Invention Explained
- Problem Addressed: The patent’s background section describes the inconvenience and technical difficulty for a user to configure different networked devices (e.g., a television and a smartphone) to share information with each other, resulting in missed opportunities for delivering relevant content and advertising (’668 Patent, col. 2:46-67).
- The Patented Solution: The invention discloses a system where a “networked device” (e.g., a television) automatically announces its services to a “client device” (e.g., a smartphone) running a sandboxed application. This allows the client device to gather “primary data,” such as what content is being watched, and send it to a “relevancy-matching server” for targeted advertising, bypassing certain security restrictions of the sandbox to enable communication (’668 Patent, Abstract; col. 3:11-44).
- Technical Importance: The technology aims to provide a zero-configuration method for linking a primary viewing screen with secondary personal devices for advertising and content delivery (’668 Patent, col. 2:46-51).
Key Claims at a Glance
- The complaint identifies independent claim 21 as exemplary (Compl. ¶57).
- The essential elements of Claim 21 include:
- A relevancy-matching server with a processor and memory configured to match targeted data with primary data.
- The server is communicatively coupled to a networked device configured to automatically announce a sandbox-reachable service.
- The server is also communicatively coupled to a client device configured to automatically process identification data, associate with the networked device via a sandboxed application, gather primary data via an embedded object, communicate that data to the server, and establish a communication session that bypasses sandbox access controls.
- The server is further configured to search a storage for matching items based on a relevancy factor.
- The complaint reserves the right to assert at least claims 11, 14, 15, 16, 19, 24, 25, 26, and 29 (Compl. ¶56).
U.S. Patent No. 9,386,356 - "Targeting with Television Audience Data Across Multiple Screens"
The Invention Explained
- Problem Addressed: The patent addresses the challenge of connecting a user's television viewing habits with their activity on other devices to enable relevant, timely advertising across multiple screens (’356 Patent, col. 2:42-65).
- The Patented Solution: The invention describes a system composed of a television, a mobile device, a relevancy-matching server, and a content identification server. The television generates "fingerprint data" from the viewed content. This fingerprint is processed by the content identification server to determine what content is being watched, and that information ("primary data") is used by the relevancy-matching server to select and deliver targeted advertisements to the user's mobile device (’356 Patent, Abstract; Fig. 10).
- Technical Importance: This patent focuses on the use of content "fingerprinting," a specific form of Automatic Content Recognition (ACR), as the core mechanism for identifying television content to enable cross-device advertising (’356 Patent, col. 1:44-50).
Key Claims at a Glance
- The complaint identifies independent claim 1 as exemplary (Compl. ¶76).
- The essential elements of Claim 1 include:
- A system comprising four distinct components: a television, a relevancy-matching server, a mobile device, and a content identification server.
- The television is configured to generate a fingerprint data.
- The relevancy-matching server is configured to match primary data (derived from the fingerprint) with targeted data.
- The mobile device is capable of being associated with the television and executing a sandboxed application.
- The content identification server is configured to process the fingerprint data from the television.
- The complaint reserves the right to assert at least claims 1, 2, 10, 11, 13, 14, 15, 16, 18, and 19 (Compl. ¶75).
III. The Accused Instrumentality
Product Identification
- The "Alphonso Platform" (Compl. ¶15).
Functionality and Market Context
- The complaint alleges the Alphonso Platform operates through partnerships with mobile applications and TV device original equipment manufacturers (OEMs) to identify television content being watched by users in real-time (Compl. ¶58, 77).
- The platform allegedly enables televisions, set-top boxes, and mobile applications to collect "fingerprint data" of viewed content, which is then communicated to servers for identification and ad targeting (Compl. ¶59, 78). A screenshot from a presentation video allegedly shows the Alphonso Platform identifying watched television content and communicating that data for targeting advertisements (Compl. ¶59; Ex. 5).
- Based on the identified content, the platform is alleged to "retarget" advertisements to a user's mobile devices, tablets, and desktops, either in real-time or on a time-shifted basis (Compl. ¶60-61, 79).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,026,668 Infringement Allegations
| Claim Element (from Independent Claim 21) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A relevancy-matching server comprising: a processor; and a memory... | Alphonso's servers which allegedly select and serve targeted advertisements based on user data (Compl. ¶59, 62). | ¶59 | col. 4:21-23 |
| wherein the relevancy-matching server is communicatively coupled to a networked device, the networked device configured to: automatically announce a sandbox-reachable service... | Televisions, set-top boxes, and living room devices that are part of the Alphonso ecosystem and collect data on viewed content (Compl. ¶59). | ¶59 | col. 3:19-24 |
| wherein the relevancy-matching server is communicatively coupled to a client device, the client device configured to: automatically process an identification data... automatically associate with the networked device... gather a primary data... | Mobile devices running applications with Alphonso's software, which allegedly pair with networked devices and collect data on watched content (Compl. ¶58-59). | ¶58 | col. 3:31-44 |
| automatically establish, by the client device, a communication session between the sandboxed application and the sandbox-reachable service through at least one of a cross-site scripting technique... | The Alphonso Platform is alleged to pair networked devices with client devices, which then communicate regarding watched content to enable targeted advertising (Compl. ¶59). | ¶59 | col. 2:50-58 |
Identified Points of Contention
- Scope Questions: A potential point of contention may be the scope of "automatically announce a sandbox-reachable service." The analysis may question whether the specific discovery mechanism used by the Alphonso Platform meets this limitation, which the patent specification links to protocols such as Bonjour and SSDP (’668 Patent, col. 3:11-12).
- Technical Questions: The complaint alleges infringement of the claim element requiring the client device to bypass sandbox controls, but provides limited technical detail on how the accused platform achieves this functionality. This raises an evidentiary question as to whether the Alphonso Platform's operation technically matches the specific bypassing methods recited in the claim.
U.S. Patent No. 9,386,356 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a television to generate a fingerprint data; | The Alphonso Platform allegedly enables televisions and set-top boxes to collect data, which is identified using "fingerprint data" (Compl. ¶78). | ¶78 | col. 1:44-46 |
| a relevancy-matching server to: match primary data generated from the fingerprint data with targeted data... | Alphonso's servers allegedly use the identified content data to select and deliver targeted advertisements to users' other devices (Compl. ¶78-79). | ¶79 | col. 1:19-23 |
| a mobile device capable of being associated with the television to: process an embedded object, constrain an executable environment in a security sandbox... | Mobile applications and websites on phones, tablets, and desktops which allegedly receive targeted ads from the Alphonso Platform (Compl. ¶77, 79). | ¶77 | col. 1:24-28 |
| a content identification server to: process the fingerprint data from the television... | Alphonso's servers that allegedly identify watched content from the collected fingerprint data (Compl. ¶78). | ¶78 | col. 4:47-52 |
Identified Points of Contention
- Scope Questions: Claim 1 recites a system with four distinct components: a television, a mobile device, a relevancy-matching server, and a content identification server. A potential defense could question whether the Alphonso Platform is architected with these four separate components or if certain functions (e.g., content identification and relevancy matching) are combined in a way that falls outside the claim's scope.
- Technical Questions: The infringement analysis will depend on whether the data collection and identification method used by the Alphonso Platform constitutes generating and processing "fingerprint data" as understood in the context of the patent.
V. Key Claim Terms for Construction
The Term: "automatically announce" (’668 Patent, Claim 21)
Context and Importance
- This term is foundational to the claimed invention's method for device discovery. Its construction will determine the type and degree of automation required for the initial communication between the networked device and the client device. Practitioners may focus on this term because the complaint's allegations of this functionality are general, and a narrow construction could create a non-infringement argument.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification suggests flexibility, stating the discovery may be performed via "a multicast-based discovery protocol, a broadcast-based discovery protocol, and/or an anycast-based discovery protocol" (’668 Patent, col. 3:57-60).
- Evidence for a Narrower Interpretation: The specification repeatedly uses specific "zero-configuration" protocols like Bonjour® and Simple Service Discovery Protocol (SSDP) as examples, which could support an argument that the term is limited to such local network discovery mechanisms (’668 Patent, col. 3:11-12).
The Term: "fingerprint data" (’356 Patent, Claim 1)
Context and Importance
- This term defines the specific type of ACR technology at the heart of the asserted claims. The viability of the infringement case depends on whether the accused platform's technology falls within the patent's definition of this term.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification describes "CID data" as a broad category that includes not only fingerprint data but also "watermark data" and "descriptive metadata," suggesting the overall system is not rigidly tied to one form of identification (’356 Patent, Fig. 12).
- Evidence for a Narrower Interpretation: The patent provides detailed examples of fingerprint data as a "fingerprint data sequence" composed of numerical values, illustrated in a table (’356 Patent, Fig. 20). This could support a narrower construction limited to this specific technical implementation of generating and comparing data sequences from media content.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement allegations are based on claims that Alphonso directs and instructs advertising partners, customers, and application developers to use the Alphonso Platform in an infringing manner through marketing materials and partnerships (Compl. ¶66-67, 83-84). The complaint also brings separate counts for induced infringement against the individual defendants, who are founders and executives of Alphonso (Compl. Counts III-VIII).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It claims Alphonso received actual notice of the ’668 Patent by at least June 17, 2015, and notice of the ’356 Patent by at least July 5, 2016, through a prior lawsuit (Compl. ¶72, 89). The complaint further alleges that Alphonso copied Samba TV's technology and attempted to undercut its pricing, suggesting an objectively high risk of infringement (Compl. ¶73, 90).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of system architecture: does the Alphonso Platform, which is described as a network of partnerships with third-party apps and devices, constitute the integrated, multi-component "system" recited in the asserted claims, particularly the distinct four-part system of ’356 Patent Claim 1?
- A key question will be one of definitional scope: can the term "automatically announce," which is described in the ’668 Patent with reference to local network discovery protocols, be construed to cover the methods by which devices in the Alphonso ecosystem become aware of each other?
- A central evidentiary question will be one of technical equivalence: does the specific Automatic Content Recognition technology used by the Alphonso Platform operate by generating and processing "fingerprint data" as that term is defined and described within the ’356 Patent, or is there a fundamental mismatch in technical operation?