DCT

3:25-cv-02141

Rich Media Club LLC v. Medianews Group Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:25-cv-02141, S.D. Cal., 08/19/2025
  • Venue Allegations: Venue is alleged to be proper in the Southern District of California because Defendant MediaNews Group, Inc. has a regular and established place of business in the district, specifically identifying The San Diego Union-Tribune office in San Diego.
  • Core Dispute: Plaintiff alleges that Defendant’s network of news websites, which utilize "lazy loading" and "ad refresh" functionalities, infringes five patents related to systems and methods for verifying online ad viewability and dynamically rendering or replacing ad content.
  • Technical Context: The technology addresses the challenge of confirming whether an online advertisement has actually been displayed within a user's browser viewport, a critical factor for accountability in the digital advertising market.
  • Key Procedural History: The complaint details a significant history of the patented technology overcoming validity challenges. This includes a Patent Trial and Appeal Board (PTAB) decision reversing a subject-matter eligibility rejection for a related patent, multiple instances of examiners withdrawing eligibility rejections during the prosecution of the patents-in-suit, a District of Arizona court decision finding a related patent eligible, and a PTAB decision denying the institution of an Inter Partes Review (IPR) against the ’482 patent. The complaint also alleges pre-suit notice was provided to the Defendant regarding several of the asserted patents.

Case Timeline

Date Event
2005-12-24 Earliest Priority Date for all Patents-in-Suit
2009-11-01 Blog post by industry insider David Cohen describing the technology as a "giant step forward"
2017-11-21 U.S. Patent No. 9,824,074 issues
2018-12-18 PTAB reverses § 101 rejection in Ex Parte Krassner decision for a related application
2021-05-11 U.S. Patent No. 11,004,090 issues
2022-10-11 U.S. Patent No. 11,468,453 issues
2023-08-29 U.S. Patent No. 11,741,482 issues
2023-09-22 Plaintiff sends patent infringement notice letter to Defendant for '453 and '482 Patents
2023-10-09 Defendant acknowledges receipt of Plaintiff's notice letter
2024-05-17 IPR Petition (IPR2024-00937) filed against the '482 Patent
2024-10-17 PTAB denies institution of IPR against the '482 Patent
2024-10-22 U.S. Patent No. 12,125,051 issues
2025-08-19 Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,824,074 - “Content Rendering and Control System for a Pre-Defined Area of a Content Page”

  • Issued: November 21, 2017.

The Invention Explained

  • Problem Addressed: In online advertising, it was difficult for advertisers and publishers to verify if an ad was actually viewable by a user, given the wide variation in screen sizes, browser window dimensions, and user scrolling behavior (Compl. ¶¶15, 18). Advertisers risked paying for ads that were never seen, and publishers lacked a reliable way to demonstrate an ad's value (Compl. ¶18).
  • The Patented Solution: The invention describes a system that uses code to determine the location of a "pre-defined area" (e.g., an ad placeholder) on a webpage relative to the "visible area of an application window" (i.e., the user's browser viewport) (Compl. ¶89). The system compares the coordinates of the ad area and the browser window to determine if the ad area is at least partially within the viewport, completely outside of it, or outside but within a "pre-defined distance" of it (compl. ¶89, Claim 16(a)-(b); ’074 Patent, Abstract). Based on this determination, the system can provide instructions to retrieve and render content, such as by "lazy loading" an ad just before a user is expected to scroll it into view (Compl. ¶19).
  • Technical Importance: This technological approach enabled a shift in the digital advertising industry from a "served impression" standard to a more accountable "viewable impression" standard, which was described in 2009 as a "giant step forward" for the industry (Compl. ¶41, 54).

Key Claims at a Glance

  • The complaint asserts at least independent method claim 16 ('074 Patent, col. 55:65-58:67).
  • The essential elements of Claim 16 include:
    • Determining, by code, whether a pre-defined area on a content page is at least partially within a visible area of an application window by comparing coordinates.
    • Determining, by code, whether the pre-defined area is completely outside the visible area but within a certain distance of it, also by comparing coordinates.
    • Transmitting an indication of the pre-defined area's position relative to the visible area (e.g., within, outside, or within distance).
    • In response to determining the area is at least partially within the visible area, providing instructions to retrieve and render content files in that area.
    • In response to determining the area is outside but within the pre-defined distance, providing instructions to retrieve and render content files in that area.

U.S. Patent No. 11,004,090 - “System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks”

  • Issued: May 11, 2021.

The Invention Explained

  • Problem Addressed: Beyond just loading ads when they are about to become viewable, publishers sought to maximize revenue from ad spaces that remained in a user's viewport for an extended period, which could lead to ad staleness (Compl. ¶19, 67).
  • The Patented Solution: The invention combines two functionalities: "lazy loading" and "ad refresh." First, it determines that an ad placeholder is nearing the viewport and, in response, serves a first ad (lazy loading) (’090 Patent, col. 70:27-37). Second, it includes instructions that direct the user's computing device to periodically determine if that ad placeholder has been in view for a "predefined time" (’090 Patent, col. 70:10-16). If that condition is met, the device sends a communication to a server, which in turn selects and serves a "replacement advertisement" to refresh the ad space (Compl. ¶93, Claim 23(d)-(e)).
  • Technical Importance: This technology underpins the modern practice of "ad refresh," allowing publishers to serve multiple, sequential ads within a single ad slot to an engaged user, which the complaint alleges is responsible for generating billions of dollars in annual advertising revenue (Compl. ¶¶67-73).

Key Claims at a Glance

  • The complaint asserts at least independent method claim 23 (’090 Patent, col. 70:23-72:12).
  • The essential elements of Claim 23 include:
    • Designating a predetermined area on an ad content page.
    • Serving the ad content page with instructions to a remote computing device.
    • Providing that the remote device determines if the predefined area is within a predefined distance outside the visible browser window and, in response, serves a first ad content into that area (the "lazy loading" step).
    • Providing instructions for the device to periodically determine if the predetermined area has been in view for a predefined time.
    • In response to the area having been in view for the predefined time, sending a communication to one or more server systems.
    • Providing that the server systems receive the communication, select a replacement advertisement, and serve it to the remote device for rendering in the predetermined area (the "ad refresh" step).

U.S. Patent No. 11,468,453 - “System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks”

  • Issued: October 11, 2022.
  • Technology Synopsis: This patent addresses the technical problems of ensuring ad viewability and maximizing revenue from viewable ad space (Compl. ¶¶18-19). It discloses methods that combine determining when an ad space is nearing a user's viewport with determining when an ad has been in view for a sufficient time to trigger a replacement (Compl. ¶¶82, 84).
  • Asserted Claims: At least claim 5 is asserted (Compl. ¶97).
  • Accused Features: The "lazy loading feature and the ad refresh feature" on Defendant's websites are accused of infringement (Compl. ¶84).

U.S. Patent No. 11,741,482 - “System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks”

  • Issued: August 29, 2023.
  • Technology Synopsis: This patent is directed to the technical problem of refreshing ads that have already been rendered and are confirmed to be in a user's view (Compl. ¶19). The disclosed method involves determining that a predefined portion of an ad area is in the visible area of the browser window and, in response, causing a communication to be sent to a server that serves replacement ad content (Compl. ¶106; Ex. I).
  • Asserted Claims: At least claim 1 is asserted (Compl. ¶106).
  • Accused Features: The "ad refresh" functionality on Defendant's websites is accused of infringement (Compl. ¶83).

U.S. Patent No. 12,125,051 - “System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks”

  • Issued: October 22, 2024.
  • Technology Synopsis: This patent claims a computer program product for rendering advertisement content, addressing the technical challenge of ensuring ads are served only when they are actually visible (Compl. ¶115). The claimed program determines whether a predefined portion of an ad area is in the visible area of the browser window and, in response, causes a communication to be sent to dispatcher servers that serve the advertisement content to be rendered (Compl. ¶115, Claim 1(a)-(b)).
  • Asserted Claims: At least claim 1 is asserted (Compl. ¶115).
  • Accused Features: The computer programs that enable "ad refresh" on Defendant's websites are accused of infringement (Compl. ¶¶83, 115).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Defendant MediaNews Group's websites, including but not limited to denverpost.com (Compl. ¶¶82-84). The complaint categorizes these websites based on their alleged functionality as "Accused Lazy Loading Websites," "Accused Ad Refresh Websites," and "Accused Lazy Loading and Ad Refresh Websites" (Compl. ¶¶82-84).

Functionality and Market Context

  • The complaint alleges the accused websites incorporate specific advertising technologies. The "lazy loading" feature is described as determining whether an ad space is outside of, but nearing, the viewport, and then inserting ads as the space approaches (Compl. ¶82). The "ad refresh" feature is described as determining whether a sufficient percentage of an ad space is within the viewport and, if so, initiating a refresh of the ad (Compl. ¶83). The complaint provides a claim chart exhibit for the '453 patent containing a screenshot of the denverpost.com website with an annotated timeline, purporting to show an ad request being triggered only after a user scrolls a specific ad placeholder ("U4") to within a predefined distance of the visible browser window (Compl. Ex. H, p. 122). MediaNews Group operates a large network of publications that allegedly reaches over 47.2 million people per month (Compl. ¶79).

IV. Analysis of Infringement Allegations

U.S. Patent No. 9,824,074 Infringement Allegations

Claim Element (from Independent Claim 16) Alleged Infringing Functionality Complaint Citation Patent Citation
[16(a)] determining, by code executed by a computing system, whether a pre-defined area on a content page in which content is to be rendered is at least partially within a visible area of an application window on a display device by comparing coordinates of the pre-defined area with coordinates of the application window... The Accused Lazy Loading Websites determine whether at least a portion of a pre-defined area (e.g., a placeholder for an ad display area) of a content page is within the viewport by comparing the coordinates of the pre-defined area with coordinates of the web browser window. ¶89 col. 7:1-20
[16(b)] determining, by the code executed by the computing system, whether the pre-defined area on the content page in which content is to be rendered is completely outside of the visible area of the application window and is also within a distance outside of the visible area of the application window by comparing the coordinates of the pre-defined area with the coordinates of the application window; The Accused Lazy Loading Websites determine whether the pre-defined area (e.g., a placeholder for an ad display area) is completely outside the viewport but also sufficiently close by comparing coordinates of the pre-defined area with coordinates of the web browser window. ¶89 col. 7:35-42
[16(d)] in response to determining that the pre-defined area on the content page in which content is to be rendered is at least partially within the visible area of the browser window, provide instructions to: retrieve one or more content files; and render the one or more content files in the pre-defined area... The servers running the Accused Lazy Loading Websites, based on determining that the pre-defined area is at least partially within the viewport but is also close to it, provide instructions to retrieve and render content (e.g., an ad). ¶89 col. 7:21-27
[16(e)] in response to determining that the pre-defined area on the content page in which content is to be rendered is completely outside of the visible area of the browser window and is also within the pre-defined distance outside of the visible area of the browser window, provide instructions to: retrieve the one or more content files; and render the one or more content files in the pre-defined area... The servers running the Accused Lazy Loading Websites, based on determining that the pre-defined area is completely outside the viewport but is also close to it, provide instructions to retrieve and render content (e.g., an ad). ¶89 col. 7:43-49
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the term "application window" as used in the patent can be construed to read on the "web browser window" of the accused websites. Additionally, the scope of "comparing coordinates" may be disputed, raising the question of whether the accused websites perform this comparison in the manner claimed or use an alternative method to determine proximity.
    • Technical Questions: The complaint alleges the accused websites determine if an ad space is "sufficiently close" to the viewport. This raises the evidentiary question of how the accused websites technically implement this determination and whether it meets the claim limitation of being "within a pre-defined distance."

U.S. Patent No. 11,004,090 Infringement Allegations

Claim Element (from Independent Claim 23) Alleged Infringing Functionality Complaint Citation Patent Citation
[23(c)] providing that the remote computing device determines whether the predefined area is within a predefined distance outside a visible area of the browser window and that in at least partial response to such determination a first ad content is served to the remote computing device and rendered in the first predetermined area; Code on the Accused Websites determines that the predefined ad area is outside the viewport but close to it. In response, an ad is served to the user’s computer and rendered in the placeholder area ("lazy loading"). ¶93 col. 66:10-21
[23(d)] wherein the instructions are configured... to: periodically determine whether the first predetermined area is in view within the visible area of the browser window on the remote computing device; and in response to determining that the first predetermined area has been in view within the visible area of the browser window for a predefined time, send a communication to one or more server computing systems; The Accused Websites monitor how long the ad placeholder has been within the viewport. Once a threshold period has passed, they send a request to a server operating the website to request a replacement ad. A claim chart for the related '482 patent includes a screenshot series purporting to show an ad being replaced after being 100% visible (Compl. Ex. I, p. 134). ¶93 col. 70:10-22
[23(e)] providing that the one or more server computing systems are configured to: receive the communication from the computing device; and in response to receiving the communication... select a replacement advertisement... serve the replacement advertisement... The servers running the Accused Websites receive the communication that an ad area is ready for an ad refresh, after which a replacement ad is served to the user’s computer and rendered in the ad placeholder area. ¶93 col. 70:17-22
  • Identified Points of Contention:
    • Scope Questions: A key question will be the construction of "predefined period of time." The infringement analysis may turn on whether the accused websites' ad refresh trigger is based on a pre-set duration of viewability as claimed, or on other factors like user interaction or a simple, non-viewability-based timer.
    • Technical Questions: What evidence does the complaint provide that the accused websites "periodically determine" viewability? This raises the question of whether the monitoring is continuous, periodic as claimed, or event-driven in a way that falls outside the claim scope.

V. Key Claim Terms for Construction

  • The Term: "pre-defined area on a content page" (from ’074 Patent, Claim 16)

    • Context and Importance: This term defines the fundamental object that the claimed method monitors and acts upon. Its construction is critical because the infringement case depends on whether the ad placeholders on Defendant's websites qualify as a "pre-defined area" under the patent's definition. Practitioners may focus on this term because Defendant could argue its dynamically generated ad slots are not "pre-defined" in the specific manner disclosed in the patent.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the area as the "designated ad content display page area where the content is to be rendered" ('074 Patent, col. 7:10-12), which could be argued to encompass any area on a webpage designated for advertising content.
      • Evidence for a Narrower Interpretation: Embodiments frequently describe this area in the context of a "billboard module" that is generated and controlled by the patented system ('074 Patent, col. 7:8-10). This could support an argument that the term is limited to placeholders created or defined in a specific way, not just any generic ad slot.

  • The Term: "predefined period of time" (from ’090 Patent, Claim 23)

    • Context and Importance: This term is the temporal trigger for the "ad refresh" functionality, a core feature of the alleged infringement. The dispute may hinge on whether Defendant's ad refresh mechanism is triggered by an ad being "in view" for a "predefined period" or by some other, non-infringing condition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself is general and does not specify a particular duration, which may support a construction covering any set or predetermined time interval for which an ad is viewable before being refreshed ('090 Patent, col. 70:14-16).
      • Evidence for a Narrower Interpretation: The specification discusses the ability to generate reports on "the duration of time that content was within the dimensions and scrolling position of the viewer's browser window" ('090 Patent, col. 61:20-24). This linkage to precise viewability tracking could support a narrower construction requiring the "predefined period" to be specifically tied to a verified duration of actual user viewability, potentially excluding simpler, non-viewability-based timers.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain specific counts for indirect infringement. The allegations focus on Defendant directly infringing the asserted method and system claims by operating its websites (Compl. ¶¶89, 93, 97, 106, 115).
  • Willful Infringement: Willfulness is alleged for the '453 and '482 patents (Compl. ¶¶103, 112). The allegations are based on Defendant's alleged "deliberate and willful refusal to participate in voluntary licensing negotiations" after Plaintiff sent a notice of infringement letter to Defendant on September 22, 2023 (Compl. ¶¶85, 102, 111).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central factual issue will be one of technical implementation: Do the "lazy loading" and "ad refresh" functionalities on MediaNews's websites operate by performing the specific coordinate comparisons and time-in-view determinations required by the asserted claims, or do they employ a technically distinct, non-infringing method to achieve a similar commercial outcome?
  • A key legal issue will be one of definitional scope: Will claim terms such as "pre-defined area" and "predefined period of time" be construed broadly to cover the dynamic ad slots and refresh triggers common in modern web advertising, or will they be limited by the patent's specification to more specific embodiments, potentially creating a path to a non-infringement ruling?
  • A foundational issue will be validity under §§ 101 and 103: Despite a strong prosecution and post-grant history cited by the Plaintiff, the case will likely involve a renewed challenge to whether the patents claim a patent-eligible technological improvement over prior art advertising systems or merely an abstract business concept implemented with conventional computer components.