DCT
3:23-cv-00211
Urban Marketing Pty Ltd v. Kongregate Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Urban Marketing Pty Ltd (Australia)
- Defendant: Kongregate, Inc. (Delaware)
- Plaintiff’s Counsel: Insigne PC
- Case Identification: 3:23-cv-00211, S.D. Cal., 02/03/2023
- Venue Allegations: Venue is alleged to be proper in the Southern District of California because Defendant Kongregate, Inc. has a regular and established place of business in the district, has committed alleged acts of infringement there, and purposefully directs activities at residents of the district.
- Core Dispute: Plaintiff alleges that Defendant’s mobile game, Inside Out Thought Bubbles, infringes two patents related to a "call-to-action lockout" system that pauses media playback to present users with an interactive prompt.
- Technical Context: The technology involves methods for embedding interruption points within digital media on mobile devices, which halt the primary content to present an advertisement or other user interaction before allowing the user to continue.
- Key Procedural History: The complaint alleges that Plaintiff attempted to license the asserted patents to Defendant beginning in October 2021 and sent a detailed letter from counsel in August 2022, but Defendant refused to engage in licensing discussions.
Case Timeline
| Date | Event |
|---|---|
| 2006-05-10 | Earliest Priority Date for '386 & '843 Patents |
| 2012-04-03 | U.S. Patent 8,150,386 Issues |
| 2014-06-10 | U.S. Patent 8,750,843 Issues |
| 2015-01-01 | Accused Product Inside Out Thought Bubbles Released (approx.) |
| 2021-10-01 | Defendant's Alleged First Notice of Patents (approx.) |
| 2022-08-31 | Plaintiff's Counsel Allegedly Sends Infringement Letter |
| 2023-02-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,150,386 - "Call to Action Lockout System and Method," Issued Apr. 3, 2012
The Invention Explained
- Problem Addressed: The patent's background describes a drawback in prior art mobile media consumption where interacting with a prompt, such as an advertisement, required "swapping to a phone message function and other application to respond, and then return to whatever activity was originally being performed" (’386 Patent, col. 1:33-38). This process is described as "undesirable" and disruptive, potentially leading to lost sales for advertisers and missed opportunities for users (’386 Patent, col. 1:39-44).
- The Patented Solution: The invention proposes a method and system where a "Call-To-Action Script" (CTAS) is triggered at a predefined "control point" during media playback on a mobile device (’386 Patent, Abstract). This script pauses the media, presents a prompt for user interaction (e.g., answering a question, viewing an ad), and "locks out" further media playback until the user provides a response, after which playback resumes (’386 Patent, col. 13:51-54). The system architecture, illustrated in Figure 1, shows a central application server managing the delivery of media content and the associated CTAS to the mobile device (’386 Patent, col. 4:21-32).
- Technical Importance: The claimed method aims to create a more integrated and less disruptive way for content providers and advertisers to engage with users on mobile devices, capturing responses within the primary media application itself (Compl. ¶14).
Key Claims at a Glance
- The complaint asserts claims 1-7 of the '386 Patent (Compl. ¶24).
- Independent Claim 1 recites a method with the following key elements:
- Providing a media application configured to respond to a control point.
- Providing a playable media content item with at least one associated control point.
- Commencing playback of the media content item.
- Triggering the control point during playback.
- Performing a Call To Action Script (CTAS) in response.
- Wherein playback is "locked out" subject to the CTAS and resumes "following a user response to said CTAS."
- The complaint reserves the right to assert additional claims (Compl. ¶27).
U.S. Patent No. 8,750,843 - "Call to Action Lockout System and Method," Issued Jun. 10, 2014
The Invention Explained
- Problem Addressed: As a continuation of the '386 Patent, the '843 Patent addresses the same technical problem of creating a less disruptive user interaction model within mobile media content (’843 Patent, col. 1:46-54).
- The Patented Solution: The '843 Patent claims a method performed by the mobile device itself, rather than the broader system claimed in the '386 Patent. The method involves the mobile device playing a media content item, triggering a control point, preventing further playback, prompting the user for a specified action, and resuming playback after the user performs the action (’843 Patent, col. 13:36-50). The solution is fundamentally the same "lockout" mechanism but is framed from the perspective of the client device's actions.
- Technical Importance: This patent focuses the inventive concept on the software executing on the mobile device, providing a different angle for asserting infringement against application developers (Compl. ¶15).
Key Claims at a Glance
- The complaint asserts claims 1-6, 9, and 10 of the '843 Patent (Compl. ¶34).
- Independent Claim 1 recites a method performed by a mobile device with the following key elements:
- Providing, via a media application, playback of a media content item.
- Triggering a control point during playback.
- In response: (i) preventing further playback and (ii) prompting a user to perform a specified action.
- In the case that the user performs the action, resuming playback of the media item.
- The complaint reserves the right to assert additional claims (Compl. ¶37).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the mobile game Inside Out Thought Bubbles and other similar digital goods produced by Kongregate (Compl. ¶¶16, 24).
Functionality and Market Context
The complaint alleges the game presents users with "call-to-action pop-ups at set control points in gameplay, such as between every level" (Compl. ¶16). These pop-ups, typically advertisements, "lock out further gameplay" until the user takes an action, such as watching the ad to receive a reward or closing the ad (Compl. ¶¶16, 34). A screenshot of a user review provided in the complaint describes this functionality, stating there is "No choice but to watch the 30-45 sec ads between levels" (Compl. ¶35). The complaint alleges the game is free to download and that Kongregate generates significant revenue from this advertising model (Compl. ¶¶17, 29).
IV. Analysis of Infringement Allegations
'386 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] method for Call to Action Lockout on a mobile device coupled to a data network | The Inside Out Thought Bubbles game is downloaded onto a mobile device via a data network (e.g., the Apple App Store) and operates on that device. | ¶25 | col. 2:56-60 |
| providing a media application configured to respond to a control point | The game application is configured to trigger advertisements at specific points, such as the completion of a game level. | ¶25 | col. 2:61-63 |
| providing a playable media content item which has at least one associated control point | The game itself is the "media content item," and the completion of a level is the "control point" that triggers an advertisement. | ¶25 | col. 13:42-43 |
| commencing playback of said media content item | A user playing a level of the game constitutes commencing playback. | ¶25 | col. 13:44 |
| triggering at least one said control point during playback of said media content item | The game triggers the display of a lockout advertisement upon the completion of a level. | ¶25 | col. 13:45-46 |
| performing an appropriate Call To Action Script (CTAS) in response to the triggered control point | In response to the trigger, a script runs that presents the user with a lockout advertisement and prevents further gameplay. | ¶25 | col. 13:48-50 |
| wherein playback of said media content is locked out subject to said CTAS and playback... resumes following a user response to said CTAS | Gameplay is paused and "locked out" until the user interacts with the advertisement (e.g., by watching it or closing it), after which gameplay can continue. | ¶¶11, 25 | col. 13:51-54 |
'843 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing, via a media application, playback of a media content item | The accused game application provides gameplay to the user. | ¶¶34, 1 | col. 13:38-39 |
| triggering a control point during the playback of the media content item | At the completion of a game level, the application triggers a "control point" that initiates a lockout advertisement. | ¶¶34, 4 | col. 13:40-44 |
| in response to the triggering of the control point: (i) preventing further playback of the media content item | The application automatically stops or pauses gameplay when the lockout advertisement appears. | ¶¶34, 1, 5 | col. 13:45-46 |
| and (ii) prompting a user of the mobile device to perform a specified action via the mobile device | The advertisement prompts the user to perform an action, such as watching the ad for a reward or clicking an "x" to close the ad. | ¶¶34, 1, 6 | col. 13:47-48 |
| and in the case that the user performs the specified action, resuming playback of the media item | After the user interacts with the ad, the application resumes gameplay, allowing the user to proceed to the next level. | ¶¶34, 1, 6 | col. 13:49-50 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether interactive "gameplay" qualifies as a "playable media content item" as the term is used in the patents. The specifications of both patents primarily describe media content as items like audio, animation, and video, such as a movie trailer (’386 Patent, col. 9:27-33; col. 2:10-12). The analysis may turn on whether the court construes "media content" broadly to encompass interactive software or narrowly to cover only the non-interactive, linear examples provided.
- Technical Questions: The infringement theory hinges on whether the accused game's trigger for an ad—"the completion of a game" level (Compl. ¶25)—functions as a "control point" as defined by the patents. Claim 1 of the '386 Patent requires the control point to be triggered by "a timing track; a counter; or parsing of the media content received by the media application" ('386 Patent, col. 13:55-59). The court will need to determine if the game's end-of-level logic constitutes one of these specific triggering mechanisms.
V. Key Claim Terms for Construction
The Term: "media content item"
- Context and Importance: This term's definition is critical because the infringement allegations equate it with interactive gameplay (Compl. ¶25). The defense may argue that "media content" as described in the patents refers to passive, linear media, not the dynamic, interactive environment of a game. Practitioners may focus on this term because its scope determines whether the patents are applicable to the accused product category at all.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims use the general term "playable media content item," which is not explicitly limited to non-interactive forms (’386 Patent, cl. 1). The specification states that media content "may include text, audio, animation, video and images" (’386 Patent, col. 3:55-57), which could be argued as an exemplary, non-limiting list.
- Evidence for a Narrower Interpretation: The patent's detailed examples consistently refer to linear media, such as a "movie trailer" (’386 Patent, col. 9:28), "video footage" (col. 8:41), and content that is "streamed" (col. 8:7). The term "playback" itself may suggest a linear progression inconsistent with interactive gameplay.
The Term: "control point"
- Context and Importance: The alleged infringement depends on mapping the game's logic for triggering an ad (e.g., level completion) to the definition of a "control point." The patent claims recite specific technical means for triggering this point. The viability of the infringement case rests on whether the accused functionality can be shown to operate in the manner required by the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "control point" could be argued to encompass any predetermined condition within an application's logic that triggers an event. The summary of the invention describes it simply as a "trigger that is read by the media application" (’386 Patent, col. 6:21-22).
- Evidence for a Narrower Interpretation: Claim 1 of the '386 Patent explicitly limits how the control point is triggered: "by reference to any one or more of the following: a timing track; a counter; or parsing of the media content received by the media application" (’386 Patent, col. 13:55-59). The specification provides a detailed table defining different types of control points, such as those based on a time-code, a data marker, or a fulfilled count (e.g., "After 5 photos have been experienced") (’386 Patent, col. 6:30-44). A court could find these examples define the term's limits.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain specific allegations of inducement or contributory infringement, focusing instead on direct infringement by Defendant for making, using, and selling the accused products (Compl. ¶¶23, 33).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the Asserted Patents since "at least as early as October 2021" from licensing outreach and a formal letter from counsel sent on August 31, 2022 (Compl. ¶¶19, 20). The complaint alleges that Defendant "made no effort to avoid infringement despite knowing that its actions were consciously wrongful and deliberate" (Compl. ¶¶28, 38).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to present two fundamental questions for the court that will likely determine the outcome:
A core issue will be one of definitional scope: Can the term "media content item", which is described in the patents using examples like video and audio streams, be construed to cover the interactive gameplay of the accused mobile game?
A key evidentiary question will be one of technical implementation: Does the accused game's mechanism for triggering an advertisement between levels meet the specific technical definition of a "control point" as required by the patent claims, which recite triggers such as a "timing track," a "counter," or "parsing of the media content"?