DCT
3:19-cv-01301
Impact Engine Inc v. Google LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Impact Engine, Inc. (Delaware)
- Defendant: Google LLC (Delaware)
- Plaintiff’s Counsel: Kirkland & Ellis LLP
- Case Identification: 3:19-cv-01301, S.D. Cal., 03/04/2020
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of California because Google maintains a regular and established place of business in the district and has committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s online advertising platforms infringe eight U.S. patents related to systems and methods for the programmatic generation of media-rich, dynamic advertisements.
- Technical Context: The technology at issue falls within the digital advertising domain, specifically concerning systems that automate the creation of customized, data-driven advertisements, a field now commonly known as "Programmatic Creative."
- Key Procedural History: The complaint details a series of meetings between 2005 and 2007, during which Plaintiff alleges it disclosed its proprietary technology, including prototypes and source code, to Defendant under the pretense of a potential partnership. Plaintiff alleges that Defendant subsequently launched its competing "Display Ad Builder" product based on these confidential disclosures, which forms the basis for the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2005-04-13 | Earliest Priority Date for all Patents-in-Suit |
| 2005 (Mid) | Impact Engine and Google first connected |
| 2005 (Fall) | First meeting between Impact Engine and Google |
| 2007 (Early) | Impact Engine and Google reconnected for further discussions |
| 2007-02 | Impact Engine sent confidential memorandum to Google |
| 2007-04 | Final meeting and product demonstration with Google |
| 2008 (Oct) | Approximate launch of Google's "Display Ad Builder" |
| 2009-05-12 | Google blog post about Display Ad Builder published |
| 2011-01-11 | U.S. Patent No. 7,870,497 Issued |
| 2013-01-15 | U.S. Patent No. 8,356,253 Issued |
| 2015-01-06 | U.S. Patent No. 8,930,832 Issued |
| 2016-06-07 | U.S. Patent No. 9,361,632 Issued |
| 2017-10-31 | U.S. Patent No. 9,805,393 Issued |
| 2018-09-04 | U.S. Patent No. 10,068,253 Issued |
| 2020-02-18 | U.S. Patent No. 10,565,618 Issued |
| 2020-02-25 | U.S. Patent No. 10,572,898 Issued |
| 2020-03-04 | Supplemental Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,870,497 - “Multimedia Communication System and Method”
- Issued: January 11, 2011.
The Invention Explained
- Problem Addressed: The patent’s background section describes the process of creating media-rich online communications, such as banner advertisements, as a costly and resource-intensive endeavor typically requiring professional design agencies, which was often prohibitive for small businesses and unnecessarily expensive for larger ones (Compl. ¶54; ’497 Patent, col. 1:13-26). Existing static ads were also alleged to consume excessive bandwidth and quickly become irrelevant (Compl. ¶53).
- The Patented Solution: The invention proposes a system to automate the creation and distribution of these communications. It describes a server-based "communication builder engine" that provides a user with a step-by-step process using templates, a media repository, and a graphical user interface, referred to as a "project builder," to assemble media assets into a finished advertisement without requiring programming knowledge (’497 Patent, Abstract; col. 2:60-64; Fig. 1).
- Technical Importance: This approach was intended to lower the cost and complexity of creating dynamic online advertisements, thereby enabling more frequent updates and more tailored messaging while conserving bandwidth (Compl. ¶55).
Key Claims at a Glance
- The complaint asserts claims from an unprovided exhibit (Compl. ¶62). Independent claim 1 is representative of the technology.
- Claim 1 of the ’497 Patent recites a system with three primary components:
- A media repository for storing communication project templates and media assets.
- A project builder that provides a graphical user interface for a user to select templates and assets.
- The project builder further includes an "interactive interview" that provides questions to a user to elicit preferences for assembling the communication.
- The complaint’s reference to "at least the claims" in the unprovided exhibit suggests that it reserves the right to assert dependent claims as well (Compl. ¶62).
U.S. Patent No. 8,356,253 - “Multimedia Communication System and Method”
- Issued: January 15, 2013.
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’497 Patent, this patent addresses the same problem of high cost and complexity in creating professional, media-rich online advertisements (’253 Patent, col. 1:29-45).
- The Patented Solution: The patent describes a similar automated system for creating multimedia communications. Key components include a media repository, a project builder for assembling templates and assets, and a "project viewer" for rendering the final communication (’253 Patent, Abstract; Fig. 1). The claims focus on the communication being a "collection of slides" composed of "design layers."
- Technical Importance: The technology aimed to democratize the creation of dynamic advertising by replacing a manual, expert-driven process with an automated, template-based system (Compl. ¶57).
Key Claims at a Glance
- The complaint asserts claims from an unprovided exhibit (Compl. ¶73). Independent claim 1 is representative of the technology.
- Claim 1 of the ’253 Patent recites a system with key elements including:
- A media repository storing templates and media assets.
- A project builder providing a graphical user interface for a user to make selections.
- A project viewer that renders the communication.
- A limitation that the communication is a "collection of slides comprising a grouping of design layers, design elements, and content containers."
- The complaint’s phrasing suggests that dependent claims may also be at issue (Compl. ¶73).
U.S. Patent No. 8,930,832 - “Multimedia Communication System and Method”
- Issued: January 6, 2015 (Compl. ¶47).
- Technology Synopsis: A continuation in the same family, this patent claims a system for generating online advertisements based on templates and user-selected media assets. The claims further specify various electronic distribution formats for the final advertisement, such as an in-stream ad or animated video file (’832 Patent, col. 15:5-15).
- Asserted Claims: The complaint asserts claims from an unprovided exhibit (Compl. ¶84).
- Accused Features: The complaint accuses Google’s advertising platforms of generating and distributing ads in various formats that allegedly practice the claimed methods (Compl. ¶82).
U.S. Patent No. 9,361,632 - “Multimedia Communication System and Method”
- Issued: June 7, 2016 (Compl. ¶48).
- Technology Synopsis: This patent claims a system for generating and broadcasting online advertisements. It focuses on the use of keywords, provided by a search engine or advertising service, to determine the distribution and content of the advertisement (’632 Patent, col. 16:1-5).
- Asserted Claims: The complaint asserts claims from an unprovided exhibit (Compl. ¶95).
- Accused Features: The complaint accuses Google’s keyword-based targeted advertising systems, such as AdWords, of infringing (Compl. ¶93).
U.S. Patent No. 9,805,393 - “Multimedia Communication System and Method”
- Issued: October 31, 2017 (Compl. ¶49).
- Technology Synopsis: This patent further describes a system for generating online ads from a data feed. The claims recite a project builder that extracts data from the feed and uses it to select media assets from a repository for integration into an advertisement template (’393 Patent, col. 15:8-19).
- Asserted Claims: The complaint asserts claims from an unprovided exhibit (Compl. ¶106).
- Accused Features: The complaint accuses Google’s systems that programmatically build ads using data feeds of infringing (Compl. ¶104).
U.S. Patent No. 10,068,253 - “Multimedia Communication System and Method”
- Issued: September 4, 2018 (Compl. ¶50).
- Technology Synopsis: This patent claims an online ad generation system where a server-side advertisement builder automatically identifies and extracts data pertaining to keywords from a query. The system then accesses a media repository to select a template and media assets based on those keywords to generate a banner ad (’253 Patent [10M], col. 17:28-18:13).
- Asserted Claims: The complaint asserts claims from an unprovided exhibit (Compl. ¶117).
- Accused Features: The complaint accuses Google’s query-based ad generation systems of infringing (Compl. ¶115).
U.S. Patent No. 10,565,618 - “Multimedia Communication System and Method”
- Issued: February 18, 2020 (Compl. ¶51).
- Technology Synopsis: This patent claims a server-side system for generating an online advertisement based on a selected template and media asset. The claims further recite a formatter for automatically formatting the ad into various distribution formats and a distribution program for broadcasting the ad to recipients (’618 Patent, col. 15:17-45).
- Asserted Claims: The complaint asserts claims from an unprovided exhibit (Compl. ¶128).
- Accused Features: The complaint accuses Google’s end-to-end ad creation and delivery platforms of infringing (Compl. ¶126).
U.S. Patent No. 10,572,898 - “Multimedia Communication System and Method”
- Issued: February 25, 2020 (Compl. ¶52).
- Technology Synopsis: This patent claims an online ad generation system where the generated communication is rendered on the recipient's device. The claims describe the communication as a collection of slides comprising design layers, elements, and content containers, which can be displayed in an auto-play mode (’898 Patent, col. 15:37-16:2).
- Asserted Claims: The complaint asserts claims from an unprovided exhibit (Compl. ¶139).
- Accused Features: The complaint accuses Google’s systems for delivering and rendering dynamic, multi-part advertisements on user devices of infringing (Compl. ¶137).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities include a suite of Google’s advertising products: "Google Ads, Google AdWords, Google Display Ad Builder, Google AdSense, Google Doubleclick, Google Marketing Platform, Google Web Designer, Google Display Network," and their iterations (Compl. ¶58).
Functionality and Market Context
- The complaint alleges that these products collectively form a system for advertisers to create, customize, manage, and distribute dynamic online advertisements (Compl. ¶58). It specifically identifies the "Display Ad Builder" as a tool that allows users of all sizes to create display ads from "interactive rich media templates" (Compl. ¶40). The complaint alleges that this ecosystem allows for the creation and deployment of targeted, media-rich ads at a scale that has generated billions of dollars in revenue for Google, positioning it as a dominant force in the online display advertising market (Compl. ¶¶4, 40).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not include claim chart exhibits, making a direct element-by-element mapping based on the pleading's text speculative. The following tables summarize the infringement theory based on the complaint's general descriptions of the accused products' functionalities.
’497 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a media repository storing communication project templates and media assets... | Google’s backend systems that store ad templates, images, text, and other media assets for use in its advertising products | ¶58 | col. 3:29-35 |
| a project builder providing a graphical user interface...with controls to receive user input for selecting... | The user-facing interfaces of Google Ads and Display Ad Builder, which allow advertisers to select templates and upload media | ¶¶40, 58 | col. 3:26-29 |
| the project builder further including an interactive interview providing a plurality of questions to a user for eliciting a user response pertaining to user preferences... | The guided, step-by-step workflows within Google's ad creation tools that prompt users for information (e.g., industry, ad type) to suggest appropriate templates and layouts | ¶40 | col. 2:32-38; Fig. 6 |
’253 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a media repository storing communication project templates and media assets... | Google’s backend systems that store ad templates, images, text, and other media assets for use in its advertising products | ¶58 | col. 3:33-39 |
| a project builder providing a graphical user interface... | The user-facing interfaces of Google Ads and Display Ad Builder, which provide tools for ad creation | ¶¶40, 58 | col. 3:29-32 |
| a project viewer, connected via the graphical user interface...that renders the communication in the graphical user interface... | The functionality within Google’s ad platforms that allows advertisers to preview the ad during creation and the system that ultimately renders the final ad for display on a third-party website | ¶58 | col. 4:46-54 |
| wherein the communication is a collection of slides comprising a grouping of design layers... | The structure of Google's ad templates, which allegedly consist of distinct layers for background, images, and text that are compiled into a final advertisement | ¶40 | col. 4:1-13 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over whether Google's ad creation tools, which offer guided user interfaces, perform the function of an "interactive interview" as that term is used in the ’497 patent. Another question may be whether Google's ad templates can be characterized as a "collection of slides comprising a grouping of design layers" as required by the ’253 patent.
- Technical Questions: The complaint alleges Google's products practice the claimed inventions, but provides limited technical detail on how the accused systems are architected. A key question will be whether the functionality of Google's integrated web platforms maps onto the distinct "project builder," "project viewer," and "compiler" components described in the patents' block diagrams (’497 Patent, Fig. 1).
V. Key Claim Terms for Construction
The Term: "interactive interview"
Context and Importance: This term appears in the independent claims of the ’497 patent. Its construction is critical because infringement may depend on whether the guided workflow in Google’s ad creation platforms constitutes such an "interview," or if the term is limited to a more specific question-and-answer format.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes a process for "auto-determining the 'content' to be included in a communication based on answers to a series of prompts or interview questions and/or other meta data" (’497 Patent, col. 2:32-36). This language may support a construction covering any UI that uses prompts to guide a user.
- Evidence for a Narrower Interpretation: Figure 6 of the patent provides an exemplary "Easy Start Interview" with specific questions such as "What type of Presentation would you like to create?" and "What is your industry?" (’497 Patent, Fig. 6). This specific embodiment may be used to argue for a narrower construction limited to an explicit, interrogatory-style process.
The Term: "project builder"
Context and Importance: This is a core component of the claimed systems across multiple patents. The definition of this term will determine whether Google’s integrated ad creation platforms, such as Google Ads and Display Ad Builder, fall within the scope of the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the project builder functionally as a tool "for generating a project viewer via which a user can view and assemble various media components or assets into an integrated communication" (’497 Patent, col. 3:26-29). This functional description could be interpreted to cover a wide range of software tools for creating advertisements.
- Evidence for a Narrower Interpretation: The patent figures depict the "project builder" as a distinct architectural component within a larger "communication builder engine," separate from the "project viewer" and "compiler" (’497 Patent, Fig. 1). An argument could be made that this structural depiction limits the term to systems with a similar modular architecture, potentially excluding more integrated software platforms.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Google induces infringement by providing its advertising products along with instructions, marketing, and support that encourage and enable its customers (advertisers) to perform the claimed methods of ad creation and distribution (e.g., Compl. ¶64, ¶75). It also alleges contributory infringement, stating that Google's products are a material part of the patented inventions and have no substantial non-infringing use (e.g., Compl. ¶65, ¶76).
- Willful Infringement: Willfulness allegations are based on purported pre-suit knowledge. The complaint alleges that Google was aware of the technology and the pending patent application as early as 2006 due to a series of business development meetings, presentations, and disclosures of confidential information by Impact Engine to Google (Compl. ¶¶ 19-37, 63, 67). The complaint alleges Google proceeded to infringe despite this knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of definitional scope: can terms grounded in the patents’ 2005-era disclosures, such as "interactive interview" and the modular "project builder," be construed to encompass the functionality of Google's modern, highly integrated, web-based advertising platforms? The outcome of claim construction on these terms may be dispositive for infringement.
- A key evidentiary question will be the narrative of pre-suit conduct: the case for willful infringement hinges on Plaintiff's ability to prove that it disclosed specific, confidential technology to Google between 2005 and 2007, and that Google subsequently incorporated that technology into its own products. The evidence presented by both parties regarding these interactions will be critical.
- A final question will be one of technological correspondence: beyond claim language, the case will require a detailed factual analysis of whether the architecture and operation of Google’s ad systems—from template selection to ad rendering and distribution—perform the same functions in substantially the same way as the systems claimed in the eight asserted patents, which describe a specific "communication builder engine" architecture.