Blackbird Tech LLC v. Mubi Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Blackbird Tech LLC d/b/a Blackbird Technologies (Delaware)
  • Defendant: Mubi, Inc. (Delaware)
  • Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
• Case Identification: 1:17-cv-00099, D. Del., 02/01/2017
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation that transacts business and has allegedly committed acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s video-on-demand service and associated mobile application infringe a patent related to an automated system for duplicating and supplying digital content in response to network-based requests.
• Technical Context: The technology concerns automated back-end systems for processing customer orders for digital media, managing content archives and duplication hardware, and fulfilling the orders, a foundational concept for on-demand content services.
• Key Procedural History: The patent-in-suit, U.S. Patent No. 7,174,362, has undergone two ex parte reexaminations, resulting in the issuance of Reexamination Certificates C1 (Feb. 1, 2013) and C2 (Mar. 18, 2014). These proceedings amended and added claims, including claims asserted in this litigation. The enforceable scope of the patent is therefore governed by the claims as they stand after these reexaminations.

Case Timeline

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

U.S. Patent No. 7,174,362 - “Method and System for Supplying Products from Pre-Stored Digital Data in Response to Demands Transmitted via Computer Network”

• Patent Identification: U.S. Patent No. 7,174,362, “Method and System for Supplying Products from Pre-Stored Digital Data in Response to Demands Transmitted via Computer Network,” issued February 6, 2007.

The Invention Explained

• Problem Addressed: The patent addresses the inefficiencies and high labor costs associated with conventional small-batch digital media duplication, such as making multiple copies of compact discs (CDs). These processes required "direct human supervision" to prepare, copy, and inspect the media, which was costly and prone to error. (’362 Patent, col. 1:33-44).
• The Patented Solution: The invention discloses a fully automated system that receives customer requests over a network, such as through a website. A central server manages these requests using three primary modules: a "Log Manager" to create a job queue, a "Resource Manager" to maintain an archive of digital content and track the status of duplication hardware, and a "CD Writer Control" module to schedule jobs and send commands to the physical "CD Writer" output devices that burn the data onto blank media. (’362 Patent, Abstract; col. 2:40-52). The system is designed to eliminate the need for human intervention from order-taking to product shipment. (’362 Patent, col. 2:15-18).
• Technical Importance: The patent describes an architecture for an automated, on-demand fulfillment system for digital content on physical media, anticipating the logic later used in purely digital content delivery networks.

Key Claims at a Glance

• The complaint asserts independent claims 2 and 10. (Compl. ¶18). It is noted that these claims were amended or added during ex parte reexamination.
• Independent Claim 2 (as amended): This method claim depends from amended claim 1 and requires, among other things, a second module storing data that comprises:
  • An expandable indexed archive of digital data representing content available for request.
  • At least one resource file for each output device in communication with the computer.
• Independent Claim 10 (as added): This is a computer-implemented method for digital data duplication, the key steps of which include:
  • taking requests at one or more user interfaces;
  • transmitting the requests through a network to a computer;
  • assigning each request to one of a plurality of output devices;
  • tracking the hard drive capacity remaining in said output device;
  • executing a duplication process using a computer comprising a first (task log), second (data storage), and third (download/transfer command) module.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are the "Mubi Service," a video-on-demand subscription, and the associated "Mubi App" for iOS and Android devices. (Compl. ¶5).

Functionality and Market Context

• The Mubi App allows subscribers to download films from Mubi's service to their mobile devices for offline viewing. (Compl. ¶11). The service is described as maintaining an "expandable indexed archive of videos" from which a curated selection is available for streaming or download. (Compl. ¶12). Users initiate a download by selecting a specific icon or command within the app. (Compl. ¶13). The complaint alleges the service tracks information associated with the user's device, including download limitations and available storage space. (Compl. ¶¶ 16-17).

IV. Analysis of Infringement Allegations

’362 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central issue may be whether a subscriber's personal mobile device can be considered an "output device" and if a digital file copy on its local storage constitutes a transfer onto "blank media" as those terms are used in the patent. The patent's specification consistently describes the "output devices" as "CD Writers" controlled by a central server to produce physical media, which raises the question of whether the claims can be construed to cover a distributed system where the "output device" is a consumer's endpoint. (’362 Patent, Abstract; col. 2:36-39).
• Technical Questions: The infringement theory for the "task log" limitation relies on a "DOWNLOADED ONLY" filter. (Compl. ¶15). A question for the court will be whether this filter, which displays a state of completed downloads, performs the function of a "task log based on incoming requests" as described in the patent—a system that time-stamps and queues jobs for processing in a specific order. (’362 Patent, col. 3:5-12).

V. Key Claim Terms for Construction

The Term: "output device"

• Context and Importance: The patent’s infringement theory rests on construing the subscriber's mobile device as the "output device." The viability of this construction is critical, as the patent specification appears to contemplate a different architecture. Practitioners may focus on this term because its definition could determine whether the accused system falls within the claim scope at all.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself refers generically to "a plurality of output devices" without explicitly limiting them to CD writers. (’362 Patent, col. 5:17).
  • Evidence for a Narrower Interpretation: The specification repeatedly and consistently refers to the output devices in the context of physical media duplication, identifying them as "CD-R writing machines" ('362 Patent, Abstract), devices for producing "CD-ROMs, CDs, mini-CDs, and DVDs" (col. 2:36-39), and "CD Writers (500)" (FIG. 2; col. 3:32-33). This consistent description of specific embodiments may be used to argue for a narrower construction.

The Term: "tracking the hard drive capacity remaining in said output device"

• Context and Importance: This limitation was added to independent claim 10 during reexamination, suggesting it was critical for establishing patentability over prior art. Its construction will be a focal point. The complaint's evidence of an error message for insufficient space directly targets this element. (Compl. ¶17).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The plain language of the claim requires "tracking the hard drive capacity remaining." A system that checks available space before initiating a download and prevents it if space is insufficient could be argued to meet this limitation. The reexamination history may shed further light on the intended scope.
  • Evidence for a Narrower Interpretation: The original patent specification discusses tracking resource files and cache space on the CD Writer itself. (’362 Patent, col. 3:40-47). An argument could be made that the "tracking" must be part of the integrated, server-controlled scheduling and resource management process described in the patent, rather than a simple pre-download check directed at a user's personal device.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead facts sufficient to support a claim for indirect infringement, such as knowledge of the patent and specific intent to induce infringement.
• Willful Infringement: The complaint does not contain allegations of willful infringement or plead facts related to pre- or post-suit knowledge of infringement. It includes a prayer for a finding of an exceptional case under 35 U.S.C. § 285, but does not provide a factual basis for such a finding in the body of the complaint.

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

• A core issue will be one of definitional scope: can the term "output device", which the patent specification consistently describes in the context of server-controlled physical media duplicators like "CD Writers," be construed to cover a subscriber’s personal mobile device in a modern video-on-demand system?
• A second key issue will be one of functional interpretation: does the accused app's "DOWNLOADED ONLY" filter, a feature that displays a final state of content on a device, perform the same function as the "task log based on incoming requests" required by the claims, which the patent describes as a chronological queue for processing jobs?
• A central question arising from the prosecution history will be how the amendments made during two ex parte reexaminations, particularly the addition of the "tracking the hard drive capacity" limitation, affect the scope of the asserted claims and the viability of Plaintiff's infringement theory against a digital streaming service.