DCT
1:13-cv-00436
HBAC Matchmaker Media Inc v. Vevo LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: HBAC Matchmaker Media, Inc. (Delaware)
- Defendant: VEVO LLC (Delaware)
- Plaintiff’s Counsel: Bayard, P.A.; Russ, August & Kabat
- Case Identification: 1:13-cv-00436, D. Del., 03/15/2013
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation, conducts business in the state, and has allegedly committed acts of patent infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s online video advertising service infringes patents related to systems for delivering targeted advertisements to specific consumers.
- Technical Context: The patents relate to the foundational technologies of addressable advertising, where specific commercial messages are delivered to select audiences based on their characteristics, a core business model for modern digital media platforms.
- Key Procedural History: The complaint notes that the asserted patents have been widely cited in subsequent patents by major technology companies. Public records subsequent to the complaint's filing indicate that claim 56 of the '393 patent was disclaimed by the assignee in 2016.
Case Timeline
| Date | Event |
|---|---|
| 1994-12-13 | '170 Patent Priority Date |
| 1995-08-22 | '393 Patent Priority Date |
| 1998-06-30 | '170 Patent Issue Date |
| 1999-12-14 | '393 Patent Issue Date |
| 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’s background section describes the inefficiency and "waste" of traditional broadcast advertising, which delivers the same commercial to all viewers regardless of individual relevance (e.g., dog food commercials shown to households without pets) ('170 Patent, col. 1:31-35). It also notes that the growing number of television channels fragments the audience, making it difficult for advertisers to reach specific consumer groups ('170 Patent, col. 2:36-42).
- The Patented Solution: The invention proposes a system where advertisements are encoded with a "Commercial Identifier (CID) code" ('170 Patent, col. 3:41-44). A "Commercial Processor" at the consumer's display site (e.g., in a set-top box) stores CID codes corresponding to that consumer's profile and compares them to the codes of incoming commercials ('170 Patent, col. 4:5-11). If a match occurs, a targeted advertisement is displayed, potentially replacing a default commercial ('170 Patent, col. 4:8-11). The architecture of the consumer-side device is illustrated in FIG. 5.
- Technical Importance: The technology provided a framework for shifting from broad geographical ad targeting to individualized, household-level addressable advertising within a multi-channel media environment ('170 Patent, col. 3:11-14).
Key Claims at a Glance
- The complaint asserts "one or more claims" ('170 Patent, Compl. ¶12). Independent claim 1 is representative of the system:
- (a) the control device at the consumer display site;
- (b) a central storage system for storing a plurality of advertisements; and
- (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.
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: Similar to its predecessor, the '393 Patent addresses the problem of delivering relevant advertising in a media landscape fragmented by a large number of channels, which reduces the effectiveness of traditional advertising ('393 Patent, col. 1:28-33).
- The Patented Solution: This patent refines the targeted advertising concept by focusing on a centralized "head end system" that makes the targeting decisions ('393 Patent, col. 13, claim 1). This system uses an "instruction formatter" to generate a "direct command" or "instruction" based on consumer, commercial, and programming data. This instruction is then sent to a control device at the consumer's location, commanding it to display a specific, selected advertisement ('393 Patent, Abstract; col. 13, claim 1(c)).
- Technical Importance: The invention describes a more centralized, command-and-control architecture for addressable advertising, where the intelligence resides primarily at the head end, which then directs the behavior of simpler client devices ('393 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts "one or more claims" ('393 Patent, Compl. ¶15). Independent claim 1 is representative of the system:
- (a) a control device at the at least one consumer display site;
- (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; and
- (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 to command it to select an advertisement.
III. The Accused Instrumentality
Product Identification
Defendant’s VEVO-branded websites and services that deliver video content and advertisements to consumers ('Compl. ¶¶12, 15).
Functionality and Market Context
The complaint alleges that VEVO operates a system for delivering targeted advertisements ('Compl. ¶12). This system allegedly involves maintaining a "central storage system" for video ads, such as a server at http://assets.vevo.com/adsales/ ('Compl. ¶12). The complaint cites VEVO’s privacy policy, which states that VEVO may use "Tracking Technologies" to associate a user's ID and other data with their personal information to "provide tailored advertisements, Promotions, recommendations and other content related to your specific interests, activities or profile" ('Compl. ¶12). These advertisements are delivered for display on a user's computer, tablet, or other web-enabled device ('Compl. ¶12). 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 that accesses and displays content from VEVO's websites. | ¶12 | col. 15:10-12 |
| (b) a central storage system for storing a plurality of advertisements; | VEVO's server infrastructure, exemplified by the domain assets.vevo.com/adsales/, which allegedly maintains and stores video advertisements for delivery. |
¶12 | col. 15:13-15 |
| (c) means in the control device for communicating with the central storage system and for selecting an advertisement...based on a command from the control device. | The software (e.g., web browser) on the user's device communicates with VEVO's servers. The system as a whole allegedly selects and delivers a targeted advertisement based on the user's profile, which is then displayed by the control device. | ¶12 | col. 15:16-24 |
Identified Points of Contention
- Scope Questions: A central question is whether the claim term 'control device at the consumer display site', described in the patent in the context of television set-top boxes and VCRs ('170 Patent, col. 6:20-22), can be construed to read on a general-purpose computer or tablet running a web browser.
- Technical Questions: The complaint alleges a system for delivering targeted ads but provides limited detail on the specific mechanism. A key question for the court will be whether the standard interaction between a web browser and a server (e.g., HTTP requests with cookies) constitutes the specific "command from the control device" required by claim 1(c) to "select" an advertisement, or if the claim requires a more specific, client-initiated selection logic.
'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 that accesses and displays content from VEVO's websites. | ¶15 | col. 13:31-32 |
| (b) a controller at the head end system for sending a signal to the control device...for causing an advertisement to be displayed... | VEVO's server-side system, which selects and sends a signal (i.e., the targeted ad data stream) to the user's device, causing the advertisement to be displayed. | ¶15 | col. 13:33-37 |
| (c) the controller at the head end system including a...consumer database...and an instruction formatter...for generating an instruction for the control device...to command the control device to select an advertisement from the head end system... | VEVO's back-end infrastructure that allegedly uses tracking technologies to create consumer profiles ("consumer database") and proprietary logic ("instruction formatter") to generate a command ("instruction") that results in the selection and delivery of a targeted ad. | ¶15 | col. 13:38-56 |
Identified Points of Contention
- Scope Questions: As with the '170 Patent, it will be disputed whether the claim architecture, which refers to a "head end system" ('393 Patent, col. 13:33), applies to the distributed nature of modern internet content delivery networks and web servers.
- Technical Questions: The infringement allegation hinges on whether VEVO's system performs the functions of the claimed "instruction formatter" that generates a discrete "instruction." The court will need to determine if delivering a targeted ad file in response to a web request is equivalent to the patent’s description of generating and downloading a specific "instruction" to a client device that commands it to select an ad.
V. Key Claim Terms for Construction
'170 Patent: "command from the control device" (Claim 1)
- Context and Importance: This term is critical for determining where the decision to select a particular advertisement is made. The infringement theory may depend on whether a standard web request from a browser can be considered a "command from the control device" that actively "select[s]" an ad.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "command." A party could argue that any signal originating from the user's device that results in the central server sending an advertisement functionally constitutes a "command" for that advertisement.
- Evidence for a Narrower Interpretation: The specification describes a "Commercial Processor" at the display site that analyzes and compares CID codes ('170 Patent, col. 4:5-11). This suggests the "command" may be an internal instruction within the client-side device's logic, rather than a general-purpose network request to a remote server.
'393 Patent: "instruction" (Claim 1)
- Context and Importance: The '393 Patent is premised on a "direct command" model. The definition of "instruction" is central to whether the accused VEVO system meets this limitation. Practitioners may focus on this term because it distinguishes the invention from a simple content delivery system.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the data stream containing the selected, targeted advertisement itself functions as the "instruction," as its reception and processing by the client device causes the ad to be displayed.
- Evidence for a Narrower Interpretation: Claim 1 explicitly requires an "instruction formatter" that "generat[es] an instruction" based on inputs from consumer, program, and commercial databases ('393 Patent, col. 13:45-50). This suggests the "instruction" is a discrete data object, separate from the advertisement creative, that embodies the targeting decision from the head end.
VI. Other Allegations
Indirect Infringement
The complaint does not set forth specific factual allegations to support claims of induced or contributory infringement. The allegations focus on direct infringement by VEVO, stating "VEVO performs a claimed method" and makes/uses/sells infringing "systems" ('Compl. ¶¶12, 15).
Willful Infringement
The complaint does not explicitly allege "willful infringement" in its counts. However, the prayer for relief requests the Court enter a judgment "declaring that this is an exceptional case within the meaning of 35 U.S.C. § 285" ('Compl. p. 6, ¶(c)). The complaint does not articulate a factual basis for this request, such as allegations of pre-suit knowledge of the patents.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim language and architecture, developed in the 1990s and described using the lexicon of cable and broadcast television (e.g., "head end," "set-top-box"), be construed to cover a modern, on-demand internet video streaming service that operates on a client-server model over the public internet?
- A key evidentiary question will be one of technical correspondence: do VEVO's alleged actions—using cookies and user profiles on a central server to select a targeted ad that is sent to a browser upon request—meet the specific, structured requirements of the asserted claims? This will likely turn on whether VEVO's system can be shown to implement the '170 patent's client-side "command" logic or the '393 patent's server-side generation of a discrete "instruction."