DCT
1:13-cv-00430
HBAC Matchmaker Media Inc v. NBC Entertainment
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: HBAC MatchMaker Media, Inc. (Delaware)
- Defendant: NBCUniversal Media, LLC; Bravo Media LLC; and USA Network, Inc. (Delaware)
- Plaintiff’s Counsel: Russ August & Kabat; Bayard, P.A.
- Case Identification: 1:13-cv-00430, D. Del., 03/15/2013
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because all Defendants are incorporated in Delaware, conduct business in the state, and have allegedly committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendants’ delivery of targeted advertising on their websites infringes patents related to systems and methods for delivering targeted advertisements to consumers.
- Technical Context: The patents address technology for delivering specific advertisements to select consumers or households in a media broadcast environment, a practice known as addressable advertising.
- Key Procedural History: The complaint alleges that Defendants have had knowledge of the asserted patents since at least April 2006 based on prior correspondence between the parties. Public records associated with the U.S. Patent No. 6,002,393 indicate that its claim 56 was disclaimed by the assignee in 2016, a post-filing event that could potentially narrow the scope of infringement contentions for that patent.
Case Timeline
| Date | Event |
|---|---|
| 1994-12-13 | ’170 Patent Priority Date |
| 1995-08-22 | ’393 Patent Priority Date |
| 1998-06-30 | ’170 Patent Issued |
| 1999-12-14 | ’393 Patent Issued |
| 2006-04-01 | Alleged Pre-Suit Knowledge by Defendants |
| 2013-03-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,774,170 - “System and Method for Delivering Targeted Advertisements to Consumers”
Issued June 30, 1998
The Invention Explained
- Problem Addressed: The patent describes the problem of advertising waste in traditional broadcast and cable television, where commercials reach a broad, undifferentiated audience, and the increasing fragmentation of viewers across many channels makes it difficult to reach specific consumer groups effectively (Compl. ¶11; ’170 Patent, col. 1:8-56).
- The Patented Solution: The invention proposes a system where advertisements are appended with a "Commercial Identifier (CID) code." A "Commercial Processor" at the consumer's display site (e.g., a set-top box) is programmed to recognize CIDs that correspond to the specific viewer's interests. When a broadcast commercial break occurs, the processor compares the incoming ad's CID with its stored CIDs and displays the ad only if there is a match, otherwise a default commercial may be shown. This enables advertisers to target messages to individual households. (’170 Patent, col. 3:40 - 4:17).
- Technical Importance: This technology represents an early approach to moving beyond broad demographic targeting toward individualized, addressable advertising in a multi-channel video environment (’170 Patent, col. 2:61 - 3:4).
Key Claims at a Glance
- The complaint asserts "one or more claims" without specifying them (Compl. ¶14). Independent claim 1 is representative:
- A control device at the consumer display site.
- A central storage system for storing a plurality of advertisements.
- Means within the control device for communicating with the central storage system.
- Means for selecting an advertisement from the central storage for display, based on a command from the control device.
U.S. Patent No. 6,002,393 - “System and Method for Delivering Targeted Advertisements to Consumers Using Direct Commands”
Issued December 14, 1999
The Invention Explained
- Problem Addressed: Like its predecessor, the ’393 Patent addresses the inefficiency and waste of non-targeted advertising in a media landscape with a proliferating number of channels (’393 Patent, col. 1:11-34).
- The Patented Solution: This invention discloses a head-end system that uses consumer, program, and commercial databases to generate specific "instructions" for a control device at the consumer's display site. The head-end controller sends a command signal to the consumer's device, commanding it to display a selected advertisement appropriate for that specific consumer, effectively directing the ad selection from the network side rather than relying solely on code-matching at the receiver. (’393 Patent, Abstract; Fig. 2a; col. 13:31-56).
- Technical Importance: The invention refines the concept of addressable advertising by centralizing the targeting intelligence at the head-end, using formatted instructions to direct the consumer-side equipment. (’393 Patent, col. 5:1-17).
Key Claims at a Glance
- The complaint asserts "one or more claims" without specification (Compl. ¶21). Independent claim 1 is representative:
- A control device at the consumer display site.
- A controller at the head-end system for sending a signal to the control device to cause a specific advertisement to be displayed.
- The controller includes: a program database, a commercial database, a consumer database, and an instruction formatter that uses inputs from the databases to generate the instruction for the control device.
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are the systems and methods used to deliver targeted advertising on websites owned or controlled by Defendants, including NBC.com, BravoTV.com, and USANetwork.com (Compl. ¶¶ 14, 16, 17, 21, 23, 24).
- Functionality and Market Context: The complaint alleges that Defendants operate systems that "customize the advertising and marketing messages" users receive when visiting their websites (Compl. ¶¶ 14, 21). This is allegedly accomplished through a "central storage system storing video advertisements" and delivering them from an ad server, identified for example by the domain "http://ads-pd.nbcuni.com/video/" (Compl. ¶¶ 14, 16, 17, 21, 23, 24). The complaint also alleges Defendants supply program materials, like video content, into which these targeted advertisements are inserted (Compl. ¶¶ 21, 23, 24). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’170 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) the control device at the consumer display site; | The user's computer, tablet, or other web-enabled device and associated web browser software. | ¶14 | col. 15:10-11 |
| (b) a central storage system for storing a plurality of advertisements; | Defendants’ alleged "central storage system storing video advertisements," exemplified by an ad server at the domain "http://ads-pd.nbcuni.com/video/". | ¶14 | col. 15:12-14 |
| (c) means in the control device for communicating with the central storage system and for selecting an advertisement from the central storage system for delivery to said display site for display intended for a particular consumer based on a command from the control device. | The user's web-enabled device, upon visiting a Defendant's website, communicates with Defendants' ad server to receive and display a targeted advertisement customized for that user. The "command" is the user's action of accessing the website. | ¶14 | col. 15:15-22 |
- Identified Points of Contention:
- Scope Question: A primary issue may be whether a user's general-purpose computer or mobile device running a web browser constitutes a "control device at the consumer display site" as contemplated by the patent, which describes the invention in the context of television receivers and set-top boxes (’170 Patent, col. 6:19-22).
- Technical Question: It is a question for the court whether the process of a web browser requesting and receiving content from a server performs the same function as the claimed "means... for selecting an advertisement... based on a command from the control device," which the patent describes as a code-matching process (’170 Patent, col. 4:3-17).
’393 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) a control device at the at least one consumer display site; | The user's computer, tablet, or other web-enabled device and associated web browser software. | ¶21 | col. 13:31-32 |
| (b) a controller at the head end system for sending a signal to the control device at the at least one display site for causing an advertisement to be displayed... intended for a particular consumer; | Defendants’ ad-serving infrastructure, which allegedly "delivers targeted advertisements for display to a user's computer, tablet, or other web-enabled device." | ¶21 | col. 13:33-38 |
| (c) the controller at the head end system including a program database... a commercial database... a consumer database... and an instruction formatter... for generating an instruction for the control device... | Defendants’ system for customizing advertising, which the complaint alleges exists based on statements in Defendants' privacy policies and the alleged delivery of targeted ads. | ¶21 | col. 13:39-56 |
- Identified Points of Contention:
- Structural Question: The complaint alleges that Defendants' systems perform targeted advertising, but it does not provide specific factual allegations identifying the distinct "program database," "commercial database," "consumer database," and "instruction formatter" components required by claim 1. The existence and function of an "instruction formatter" in the accused system may be a central point of dispute.
- Technical Question: What evidence does the complaint provide that Defendants' system sends a "signal to the control device... for causing an advertisement to be displayed," as opposed to the control device (browser) merely requesting an ad from a server in a standard client-server exchange?
V. Key Claim Terms for Construction
For the ’170 Patent
- The Term: "control device at the consumer display site"
- Context and Importance: The definition of this term is critical for determining if the patent's scope, rooted in dedicated television hardware, can extend to modern, general-purpose computing devices used for web browsing. Practitioners may focus on this term because the patent repeatedly describes embodiments like set-top boxes, VCRs, and television receivers.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims use the general term "control device" without explicitly limiting it to a specific type of hardware, which may support an interpretation that covers any device at the consumer's location that performs the claimed control functions.
- Evidence for a Narrower Interpretation: The specification consistently refers to the "control device" in the context of television hardware, such as an "individually addressable digital recording device (RD)... installed at the display site in the television or radio receiver, VCR, display device or set-top-box or modular decoder" (’170 Patent, col. 6:40-45).
For the ’393 Patent
- The Term: "instruction formatter"
- Context and Importance: This term appears to define a specific, core component of the head-end controller. The infringement case may depend on whether Defendants' ad-serving architecture includes a component that meets the definition of an "instruction formatter."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term could be construed broadly to mean any software or hardware module that logically combines data from different sources to make an ad-targeting decision.
- Evidence for a Narrower Interpretation: The patent claims and figure descriptions suggest a specific structure, an "instruction formatter having inputs from the consumer database, the program database and the commercial database for generating an instruction" (’393 Patent, col. 13:45-49; Fig. 2a). This suggests it is a distinct component that receives inputs from three specified database types to generate a command.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that NBCUniversal induces infringement by its users. It claims that by advertising, promoting, and providing instructions for using its websites, NBCUniversal specifically intends for users' devices to perform the infringing actions with knowledge of the patents (Compl. ¶¶ 15, 22).
- Willful Infringement: Willfulness is alleged against NBCUniversal based on pre-suit knowledge of the asserted patents. The complaint claims this knowledge dates back to "at least as early as April 2006, based on correspondence... exchanged between HBAC and representatives of NBCUniversal" (Compl. ¶¶ 15, 18, 22, 25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can claim terms like "control device" and "consumer display site", which are described in the patents' 1990s cable and broadcast television context, be construed to cover modern internet architecture, specifically a user's personal computer or mobile device running a standard web browser?
- A key evidentiary question will be one of structural correspondence: does the complaint provide sufficient factual basis to suggest that the Defendants’ web-based ad-serving systems possess the specific multi-part architecture claimed in the patents, particularly the distinct databases and "instruction formatter" required by the ’393 patent, or is there a fundamental mismatch between the claimed system and the accused technology?
- The infringement analysis will raise a functional question: does a standard client-server web request, initiated by a user's browser, constitute the "command from the control device" of the ’170 patent or the "signal to the control device" from a head-end controller as recited in the ’393 patent, or do the patented methods require a different, more specific form of communication and control?