DCT
4:20-cv-05341
Uniloc 2017 LLC v. Google LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017 LLC (Delaware) and Uniloc USA, Inc. (Texas)
- Defendant: Google LLC (Delaware)
- Plaintiff’s Counsel: Etheridge Law Group, PLLC
- Case Identification: 2:18-cv-00502, E.D. Tex., 11/17/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas based on Defendant’s purported "regular and established place of business" within the district, citing the presence of Google Global Cache servers, Google Fi cellular network infrastructure, and Google Cloud Interconnect facilities.
- Core Dispute: Plaintiff alleges that Defendant’s video streaming platforms, including YouTube, YouTube TV, and Google Play, infringe a patent related to tracking user viewing progress for digital media streamed over a network.
- Technical Context: The technology relates to the online media industry's methods for monitoring user engagement with streamed content, a practice essential for features like "resume watching" and for valuing advertising inventory.
- Key Procedural History: The complaint alleges that Google had pre-suit knowledge of the patent-in-suit because it was cited during the prosecution of a Google patent application as early as 2013. Subsequent to the filing of this complaint, an Inter Partes Review (IPR) proceeding at the U.S. Patent and Trademark Office resulted in a certificate, issued September 20, 2021, cancelling all claims of the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2008-08-21 | '609' Patent Priority Date |
| 2013-03-26 | '609 Patent Issue Date |
| 2013-06-11 | Google acquires Waze (per complaint) |
| 2016-06-01 | Google Street View image capture date (per complaint) |
| 2018-11-17 | Complaint Filing Date |
| 2021-09-20 | IPR Certificate issues cancelling claims 1-3 of the '609 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,407,609, "SYSTEM AND METHOD FOR PROVIDING AND TRACKING THE PROVISION OF AUDIO AND VISUAL PRESENTATIONS VIA A COMPUTER NETWORK," issued March 26, 2013
The Invention Explained
- Problem Addressed: The patent describes the internet as a decentralized network with a virtually unlimited amount of content, making it difficult for users to locate specific information and for providers to engage with users around common interests (’609 Patent, col. 1:40-54, col. 2:5-9).
- The Patented Solution: The invention proposes a method to track user interaction with digital media. A "first computer system" provides a web page and a "timer applet" to a user's computer. As the user views the media, which is streamed from a "second, distinct computer system" (like a content delivery network), the timer applet periodically sends identifier data back to the first system. This allows the first system to store data "indicative of an amount of time the digital media presentation data is streamed," effectively tracking viewing duration (’609 Patent, Abstract; Fig. 10).
- Technical Importance: The described method enables a content platform to monitor user viewing time for media that is hosted and delivered by a separate technical infrastructure, a common architecture in modern web applications (’609 Patent, col. 12:5-15). This tracking is foundational for analytics, advertising models, and user-facing features.
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶98). The IPR certificate issued post-filing cancelled claims 1-3.
- The essential elements of independent claim 1 include:
- A method for tracking digital media presentations delivered from a first computer system to a user's computer.
- Providing a web page, identifier data, and a timer "applet" to the user's computer.
- Receiving portions of the identifier data back from the user's computer at predetermined time intervals, triggered by the applet.
- Storing data indicative of the received identifier data.
- The web page causes media to be streamed from a "second computer system distinct from the first computer system."
- The stored data is "indicative of an amount of time the digital media... is streamed" and also "indicative of a cumulative time the corresponding web page was displayed."
III. The Accused Instrumentality
Product Identification
- Google’s "Play," "YouTube," and "YouTube TV" services and mobile applications (Compl. ¶83).
Functionality and Market Context
- The complaint alleges these Google services track digital media presentations delivered to a user’s device (Compl. ¶¶83-84). Functionality such as "Resume Watching" is presented as evidence of this tracking, where the service remembers and displays the user’s progress in a video or show (Compl. ¶84). The complaint includes a screenshot from YouTube TV's "RESUME WATCHING" interface, which shows partially viewed programs with indicators of time remaining, such as "30 min left" (Compl. p. 31). The platforms are alleged to use a distributed architecture where the main website (e.g., "youtube.com") is distinct from the content delivery network (e.g., "googlevideo.com") that streams the video file (Compl. ¶96).
IV. Analysis of Infringement Allegations
'609 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a corresponding web page to the user's computer for each digital media presentation to be delivered using the first computer system | Google provides web pages via its YouTube, YouTube TV, and Google Play services that are used to deliver video content. The complaint provides a screenshot of a specific episode page for the show "Mom" on YouTube TV (Compl. p. 32). | ¶85 | col. 13:59-62 |
| providing identifier data to the user's computer using the first computer system | Google’s services allow users to create accounts, which enables the tracking of a user's viewing history across devices. | ¶86 | col. 13:21-23 |
| providing an applet to the user's computer... wherein the applet is operative by the user's computer as a timer | The accused services provide a script that tracks how much of a presentation a user has watched, which the complaint alleges reflects the operation of a timer running in the background. | ¶87 | col. 13:36-39 |
| receiving at least a portion of the identifier data from the user's computer responsively to the timer applet each time a predetermined temporal period elapses | The user's device sends periodic updates on viewing position to Google's servers, allowing playback to resume at the correct point even if the browser is closed and reopened. The complaint shows that after reloading a page, playback for the show "Mom" resumed at 00:24 instead of the beginning (Compl. p. 36). | ¶88, ¶90 | col. 13:28-34 |
| storing data indicative of the received at least portion of the identifier data | Google stores the user's viewing history, which is used to populate features like the "Resume Watching" page. A screenshot shows a progress bar under the "Hotel Transylvania 3" movie thumbnail indicating it has been partially watched (Compl. p. 38). | ¶95 | col. 14:46-50 |
| wherein each provided webpage causes corresponding digital media presentation data to be streamed from a second computer system distinct from the first computer system | Media content is streamed from servers at "googlevideo.com", which is alleged to be a "second computer system" distinct from the "first computer system" web servers at "www.youtube.com". The complaint offers a network traffic log as evidence (Compl. p. 39). | ¶96 | col. 14:35-40 |
| wherein the stored data is indicative of an amount of time the digital media presentation data is streamed | The stored data (e.g., current playback position and total duration) indicates the amount of time the video has been streamed to the user from the content delivery network. | ¶97 | col. 14:40-44 |
| and wherein each stored data is together indicative of a cumulative time the corresponding web page was displayed by the user's computer | The tracking of the user's viewing time is alleged to reflect the cumulative time the web page containing the video player was displayed. | ¶98 | col. 14:46-50 |
Identified Points of Contention
- Scope Questions: A central question may be whether Google's web-serving platform ("youtube.com") and its content delivery network ("googlevideo.com") constitute "distinct" computer systems as required by the claim, or if they are considered components of a single, integrated system for claim construction purposes.
- Technical Questions: The final limitation of Claim 1 requires the stored data to be "indicative of a cumulative time the corresponding web page was displayed." It raises the question of whether the accused system, which appears to track the media's playback timestamp, meets this specific limitation, or if there is a functional mismatch. A user could have a web page displayed for a long period while the video is paused, severing the direct link between page display time and video stream time.
V. Key Claim Terms for Construction
The Term: "applet"
- Context and Importance: The infringement theory relies on a script within the accused web pages functioning as the claimed "applet." The construction of this term will determine whether modern web technologies like JavaScript fall within the patent's scope.
- Evidence for a Broader Interpretation: The specification defines an applet as "a software component that runs in the context of another program, in the case of page 900 of FIG. 9, a web browser," a broad definition that may encompass scripts integral to a webpage ('609 Patent, col. 12:65-col. 13:1).
- Evidence for a Narrower Interpretation: Practitioners may argue that in the 2008-2009 timeframe, "applet" more specifically referred to self-contained, executable programs like Java Applets, distinct from the surrounding page code, potentially narrowing the claim scope to exclude integrated scripts.
The Term: "second computer system distinct from the first computer system"
- Context and Importance: The patent's architecture requires two "distinct" systems. The viability of the infringement claim depends on whether Google's functionally separate but commonly owned web and video servers meet this requirement.
- Evidence for a Broader Interpretation: The patent's figures depict separate servers (e.g., web server 34, file server 36) connected via a network, which could suggest that functional separation into different servers, even under common ownership and using different subdomains, is sufficient to be "distinct" ('609 Patent, Fig. 1).
- Evidence for a Narrower Interpretation: A defendant may argue that "distinct" implies a higher degree of separation, such as different ownership or administrative control, and that different services within Google's unified global infrastructure are not "distinct" in the manner contemplated by the patent.
VI. Other Allegations
- Indirect Infringement: The complaint alleges Google induces infringement by providing instructions, demonstrations, and user guides that direct customers to use the accused services in an infringing manner (Compl. ¶99). It also alleges contributory infringement for providing a material part of the invention (Compl. ¶100).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge, citing the '609 patent's use in a 2013 rejection of a Google patent application, and post-suit knowledge upon service of the complaint (Compl. ¶¶101-102).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary threshold issue, which developed after the complaint was filed, is the viability of the action itself: given that the U.S. Patent and Trademark Office cancelled all asserted claims (1-3) in a subsequent Inter Partes Review, a dispositive question is whether any valid and enforceable patent rights remain to be litigated.
- A key architectural question is one of definitional scope: can Google's content delivery network (e.g., "googlevideo.com") be construed as a "second computer system distinct from the first computer system" ("youtube.com"), as required by the patent's plain language, or are they merely integrated components of a single system?
- A central infringement question will be one of functional congruence: does the accused system, which tracks a user's position within a media stream, perform the method of tracking the "cumulative time the corresponding web page was displayed" as specifically recited in Claim 1, or does this represent a fundamental mismatch in technical operation?