DCT
1:11-cv-00003
United Video Properties Inc v. Amazon.com Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rovi Corporation, Rovi Guides, Inc., United Video Properties, Inc., TV Guide Online, LLC, and TV Guide Online, Inc. (Delaware, California)
- Defendant: Amazon.com, Inc., and IMDb.com, Inc. (Delaware, Washington)
- Plaintiff’s Counsel: Richards, Layton & Finger, P.A.
- Case Identification: 1:11-cv-00003, D. Del., 02/17/2011
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because both Defendants are Delaware corporations that conduct business in the district, including offering for sale and selling the accused products and services.
- Core Dispute: Plaintiff alleges that Defendant’s electronic programming guides, as implemented in IMDb TV Listings, Amazon Video on Demand, and IMDb Videos, infringe five U.S. patents related to interactive television program guides and associated technologies.
- Technical Context: The patents relate to the field of Electronic Program Guides (EPGs), a technology critical for navigating the expanding landscape of television, cable, and streaming video content.
- Key Procedural History: The complaint alleges that Plaintiff (then known as Macrovision) first notified Defendant of infringement of the ’078, ’268, and ’643 patents in June 2009 during licensing discussions. The complaint further notes Plaintiff’s extensive licensing of its EPG patent portfolio to numerous major technology and media companies.
Case Timeline
| Date | Event |
|---|---|
| 1991-12-04 | ’078 Patent Priority Date |
| 1993-09-09 | ’268 Patent Priority Date |
| 1993-09-09 | ’128 Patent Priority Date |
| 1997-10-06 | ’690 Patent Priority Date |
| 1998-05-19 | ’643 Patent Priority Date |
| 1999-11-23 | ’078 Patent Issue Date |
| 2001-08-14 | ’268 Patent Issue Date |
| 2004-07-27 | ’128 Patent Issue Date |
| 2009-02-17 | ’643 Patent Issue Date |
| 2009-06-XX | Plaintiff allegedly notifies Defendant of infringement |
| 2009-10-13 | ’690 Patent Issue Date |
| 2011-02-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,988,078 - "Method and Apparatus for Receiving Customized Television Programming Information by Transmitting Geographic Location to a Service Provider Through a Wide-Area Network"
- Issued: November 23, 1999 (the "’078 Patent")
The Invention Explained
- Problem Addressed: The patent’s background section describes the difficulty of using conventional video cassette recorders (VCRs) and the disadvantage of prior art systems that required adding specialized hardware and software to existing VCRs or cable boxes to implement electronic schedule guides (’078 Patent, col. 1:46-51).
- The Patented Solution: The invention proposes using a conventional personal computer to connect to a remote database via a wide-area network, such as a telephonic connection (’078 Patent, col. 1:63-65). The user transmits their geographic location (e.g., ZIP code) to a service provider, which in return sends customized television schedule information for that specific location back to the user's computer for display and for programming a VCR (’078 Patent, Abstract; col. 6:45-54).
- Technical Importance: This approach leveraged the growing capabilities of personal computers and networked communication to create personalized media experiences, foreshadowing modern location-based content delivery. (Compl. ¶12-13).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶25).
- The essential elements of independent claim 1, a method claim, include:
- Providing a computerized unit with a modem at a television viewing location.
- Establishing a connection to a wide-area network via the modem.
- Transmitting the geographical location of the viewing location to a service provider over the network.
- Receiving, from the service provider, information specific to the programming available at that location.
U.S. Patent No. 6,275,268 - "Electronic Television Program Guide With Remote Product Ordering"
- Issued: August 14, 2001 (the "’268 Patent")
The Invention Explained
- Problem Addressed: The patent identifies a deficiency in prior electronic program guides (EPGs), noting they failed to provide users with the ability to order products and services remotely that were associated with the television programs listed in the guide (’268 Patent, col. 1:14-20).
- The Patented Solution: The invention is an EPG system that integrates e-commerce functionality directly into the program guide interface. The guide displays information indicating that a product or service related to a program (such as a transcript or videocassette) is available for purchase, and provides the user with a mechanism, via a remote control, to place an order for that product (’268 Patent, Abstract; col. 5:53-62).
- Technical Importance: The technology transformed the EPG from a passive information source into an interactive platform for commerce, linking content consumption with direct purchasing opportunities. (Compl. ¶12-14).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶34).
- The essential elements of independent claim 1, a method claim, include:
- Displaying program listings with an electronic television program guide.
- Displaying information indicating that a "product other than electronically-delivered video" related to the programming is available for purchase.
- Allowing the user to order said product using the electronic television program guide.
U.S. Patent No. 6,769,128 - "Electronic Television Program Guide Schedule System and Method with Data Feed Access"
- Issued: July 27, 2004 (the "’128 Patent")
- Technology Synopsis: The patent describes an EPG system capable of receiving data from multiple, distinct data feeds and integrating that information for display. This allows the guide to present not only program schedule information but also other types of related content, such as sports scores, news, or financial data, creating a richer, more interactive user experience (’128 Patent, Abstract).
- Asserted Claims: One or more claims of the ’128 Patent (Compl. ¶41).
- Accused Features: The complaint alleges infringement by the electronic programming guides within Amazon Video on Demand and IMDb Videos (Compl. ¶41).
U.S. Patent No. 7,493,643 - "Program Guide System with Video-On-Demand Browsing"
- Issued: February 17, 2009 (the "’643 Patent")
- Technology Synopsis: The technology addresses the user experience of browsing Video-On-Demand (VOD) content. The patented system allows a viewer to browse a VOD program guide display while simultaneously continuing to view a previously selected television program in the background, thus avoiding interruption of the primary viewing experience (’643 Patent, Abstract).
- Asserted Claims: At least claim 7 of the ’643 Patent (Compl. ¶49).
- Accused Features: The complaint alleges infringement by the electronic programming guides within Amazon Video on Demand (Compl. ¶47).
U.S. Patent No. 7,603,690 - "Interactive Television Program Guide System with Pay Program Package Promotion"
- Issued: October 13, 2009 (the "’690 Patent")
- Technology Synopsis: This patent discloses a promotional feature within an EPG. When a user selects a pay program for purchase, the system determines if that program is part of a larger package of programs and, if so, presents the user with information about the package, creating an opportunity to upsell the user from an individual purchase to a package subscription (’690 Patent, Abstract).
- Asserted Claims: One or more claims of the ’690 Patent (Compl. ¶56).
- Accused Features: The complaint alleges infringement by the electronic programming guides within Amazon Video on Demand (Compl. ¶56).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "electronic programming guides within IMDb TV Listings," "electronic programming guides within Amazon Video on Demand," and "electronic programming guides within IMDb Videos" (Compl. ¶23, ¶32, ¶41).
Functionality and Market Context
- The complaint alleges that Defendants make, use, sell, and offer electronic programming guides that provide users with information about television shows, movies, and other video content (Compl. ¶23, ¶32, ¶41). The complaint does not provide specific technical details about the operation of these guides. It alleges that Defendants are Delaware corporations that do business throughout the United States, including in Delaware, through their widely used websites and services (Compl. ¶10-11).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint provides high-level allegations of infringement without detailed mapping of accused functionalities to specific claim limitations. The following tables summarize the infringement theories that may be inferred from the allegations.
’078 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a computerized unit at the particular viewing location, the unit including an operator input and a modem; | The IMDb TV Listings service is accessed by users on internet-connected devices (e.g., personal computers, mobile devices). | ¶23 | col. 7:46-49 |
| establishing a connection to a wide-area network through the modem; | The user's device establishes an internet connection to access IMDb's servers. | ¶23 | col. 7:50-51 |
| transmitting, from the computerized unit, information... regarding the geographical location of the particular viewing location; | The user's device transmits location information, such as a user-entered ZIP code or IP-based location, to IMDb's servers. | ¶23 | col. 7:52-57 |
| receiving, from the service provider, information specific to the type of programming available to the particular viewing location. | IMDb's servers return television schedule data customized for the user's geographic area to be displayed on the user's device. | ¶23 | col. 7:58-62 |
’268 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| displaying program listings with the electronic television program guide... | Amazon Video on Demand and IMDb Videos display listings of available television and movie programming. | ¶32 | col. 37:22-25 |
| displaying information... indicating that a product other than electronically-delivered video is available for purchase... | The complaint's allegation suggests the accused services display information about related physical goods (e.g., DVDs, merchandise) that can be purchased. | ¶32 | col. 37:26-32 |
| allowing the user to order the product other than the electronically-delivered video using the electronic television program guide. | The complaint's allegation suggests the accused services provide a user interface to place an order for such related physical goods. | ¶32 | col. 37:33-36 |
- Identified Points of Contention:
- Scope Questions: A potential issue for the ’078 Patent is whether the term "computerized unit," as understood from a patent with a 1991 priority date describing control of a VCR, can be construed to read on modern, general-purpose devices like smartphones running a web browser to access a website.
- Technical Questions: A key evidentiary question for the ’268 Patent infringement allegation will be whether the accused Amazon and IMDb services, at the time of the alleged infringement, actually offered for sale and provided an ordering mechanism for a "product other than electronically-delivered video" that was directly "related to" the displayed programming, as required by the claim. The complaint does not provide a specific factual example of this functionality.
V. Key Claim Terms for Construction
Term: "computerized unit" (’078 Patent, Claim 1)
- Context and Importance: The definition of this term is critical for determining whether the patent, conceived in the era of standalone personal computers, applies to the modern ecosystem of web browsers, mobile applications, and smart devices. A narrow construction might limit the claim to the specific PC-and-VCR setup described, while a broader one could encompass a wider range of modern devices.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the term "personal computer" is "used broadly to incorporate work stations, minicomputers and portable units" (’078 Patent, col. 3:19-22). This language may support a construction that is not limited to a specific type of desktop computer.
- Evidence for a Narrower Interpretation: The preferred embodiment extensively describes a "personal computer 18" running a "special application program" and physically connected to an "infrared transmitter and receiver 26" to control a separate VCR and television receiver (’078 Patent, Fig. 1; col. 3:22-35). This detailed disclosure of a specific hardware configuration may be used to argue for a narrower interpretation tied to a device capable of performing these control functions.
Term: "product other than electronically-delivered video" (’268 Patent, Claim 1)
- Context and Importance: This term distinguishes the claimed invention from simply ordering a video stream or download. The infringement theory for the ’268 Patent appears to hinge on the accused services offering tangible goods or non-video services (e.g., physical media, transcripts, merchandise) directly associated with the displayed video content.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides several examples, including a "program transcript or videocassette" (’268 Patent, Abstract) as well as "ancillary products" such as "tee shirts and other apparel, books, movie soundtracks, toys, etc." (’268 Patent, col. 33:49-52). This list suggests the term covers a wide range of related goods.
- Evidence for a Narrower Interpretation: The core of the invention is described in relation to products directly derived from the program, such as a physical copy or transcript. A defendant may argue that the term requires a direct, substantive link to the program content itself, and would not cover, for example, a generalized recommendation for a book by an actor appearing in the program if that book is unrelated to the program's subject matter.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants actively induce infringement by "encouraging and instructing" end users to use the accused EPGs in a manner that infringes the asserted patents (Compl. ¶25, ¶34, ¶49). It also pleads contributory infringement, alleging the accused products are "specially made or adapted for infringing" and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶24, ¶33, ¶48).
- Willful Infringement: Willfulness is alleged based on Defendants' purported actual knowledge of the patents and their infringement. The complaint specifically alleges that Rovi notified Amazon of its infringement of the ’078, ’268, and ’643 patents "no later than June 2009" (Compl. ¶27, ¶36, ¶51).
VII. Analyst’s Conclusion: Key Questions for the Case
This case will likely involve significant disputes over both claim scope and the factual operation of the accused systems. The central open questions presented by the complaint are:
- A core issue will be one of technological scope: Can claim terms from patents with priority dates in the 1990s, written in the context of personal computers controlling VCRs and nascent online services, be construed to cover modern, sophisticated web-based and streaming video platforms operating on a wide array of smart devices?
- A key evidentiary question will be one of functional operation: As the complaint provides only conclusory allegations, discovery will be critical to determine whether the accused Amazon and IMDb services actually perform the specific functions required by the asserted claims. For example, does Amazon's VOD service in fact provide an integrated ordering mechanism for related physical goods, as may be required by the '268 patent, or promote pay-program packages upon selection of a single program, as may be required by the '690 patent?