Eureka Database Solutions LLC v. Panopto Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Eureka Database Solutions, LLC (Texas)
  • Defendant: Panopto, Inc. (Delaware)
  • Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
• Case Identification: 1:17-cv-01530, D. Del., 10/27/2017
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and has a regular and established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s Smart Search product infringes three patents related to methods for indexing, searching, and accessing specific time-based locations within multimedia files.
• Technical Context: The technology addresses the challenge of making large archives of video and audio content searchable at a granular level, a critical function for modern video content management, e-learning, and enterprise communication platforms.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

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

U.S. Patent No. 6,173,287 - "Technique for ranking multimedia annotations of interest," Issued January 9, 2001

The Invention Explained

• Problem Addressed: At the time of the invention, organizations possessed large amounts of multimedia content but had "little or no means of searching within multimedia content," particularly for finding specific segments inside audio or video streams ('287' Patent, col. 1:55-58).
• The Patented Solution: The invention describes a computer-implemented method for locating a specific "item of interest" (e.g., a spoken phrase) within a collection of media files. It achieves this by first searching a database of "annotations" (metadata) to find one that matches a user's query. This annotation is linked to both a "data identifier" (which identifies the media file) and a "location identifier" (e.g., a timestamp). In a subsequent step, the system uses the data identifier to find an "address identifier" (e.g., a URL) for the media file, and then combines the address and location identifiers to access and play the media directly from the point of interest ('287 Patent, Abstract; col. 2:16-65).
• Technical Importance: This technology provided a structured framework for moving beyond simple file-level metadata and enabling time-based, in-content search and retrieval for large multimedia libraries ('287 Patent, col. 1:11-17).

Key Claims at a Glance

• The complaint asserts independent claim 1 and alleges infringement of "one or more claims" (Compl. ¶15, ¶16).
• Independent Claim 1 of the '287 Patent recites the essential elements of a method comprising:
  • a) searching a plurality of stored annotations corresponding to different items within the plurality of stored representations of data to locate an annotation of interest, the annotation of interest having an associated data identifier and an associated location identifier;
  • b) searching a plurality of stored data identifiers associated with the plurality of stored annotations to locate the associated data identifier and an associated address identifier; and
  • c) accessing the item of interest at the location of interest using the associated address identifier and the associated location identifier.

U.S. Patent No. 6,243,708 - "Technique for accessing an item of interest within a stored representation of data," Issued June 5, 2001

The Invention Explained

• Problem Addressed: Building on the challenge of searching multimedia, this patent focuses on the need to not just find all relevant results within a media stream, but to identify the most relevant position for the user ('708' Patent, col. 21:49-60).
• The Patented Solution: The invention claims a method that goes beyond simple searching by introducing a ranking step. After identifying locations within a multimedia stream that are relevant to a query, the system "rank[s] the relevance of each of the identified locations" and then determines a "particularly relevant" one based on that ranking ('708 Patent, Abstract). The specification discloses a "modified document retrieval technique" for this ranking, which calculates a score based on factors like the rarity of query words and their temporal proximity within the media stream ('708 Patent, col. 21:30-41, eq. 2).
• Technical Importance: The introduction of relevance ranking for in-media search results was a significant step toward improving the usability of multimedia search engines, enabling them to present the most likely desired result first.

Key Claims at a Glance

• The complaint asserts independent claim 1 and alleges infringement of "one or more claims" (Compl. ¶32, ¶33).
• Independent Claim 1 of the '708 Patent recites the essential elements of a method comprising:
  • a) identifying a multimedia stream based upon a query;
  • b) identifying locations relevant to the query within the multimedia stream;
  • c) ranking the relevance of each of the identified locations; and
  • d) determining a particularly relevant one of the identified locations within the multimedia stream based upon the ranking.

U.S. Patent No. 6,311,189 - "Technique for matching a query to a portion of media," Issued October 30, 2001

• Patent Identification: U.S. Patent No. 6,311,189, "Technique for matching a query to a portion of media," Issued October 30, 2001 (Compl. ¶41).
• Technology Synopsis: This patent discloses a method for directly accessing a portion of a media item in response to a query. The method involves searching a plurality of "annotation values" (e.g., transcribed words) to find one that matches the query, identifying the "start time" of the media stream segment corresponding to that matched annotation value, and providing that start time back to the user ('189' Patent, Abstract; Compl. ¶41).
• Asserted Claims: Independent Claim 1 (Compl. ¶48).
• Accused Features: The complaint alleges that Panopto's Smart Search infringes by allowing a user to search for a word, identifying the timestamp for each occurrence, and providing those start times in the user interface, which allows direct access to that point in the media (Compl. ¶¶49-52).

III. The Accused Instrumentality

• Product Identification: The accused instrumentality is Defendant's "Smart Search" product or feature (Compl. ¶2).
• Functionality and Market Context:
  • The complaint describes Smart Search as a feature for accessing a specific item, such as a spoken or written word, within video streams (Compl. ¶17). It allegedly operates by identifying these words, which are associated with a textual representation and a timestamp (Compl. ¶¶18-19).
  • When a user clicks a search result, the system reportedly navigates to a page with the video stream advanced to the specific timestamp associated with the found word (Compl. ¶21).
  • The complaint alleges that Smart Search ranks results by "ordering the search results" and "placing a particularly relevant result at the front of the list" (Compl. ¶¶36-37).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'287 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: Claim 1 recites two distinct "searching" steps (element 'a' and element 'b'). A central question for the court may be whether the accused product performs two functionally separate search operations as claimed, or if it performs a single, integrated search. The complaint's allegations describe the functions separately but do not provide details on the underlying technical implementation.
  • Technical Questions: Element 'b' requires "searching a plurality of stored data identifiers" to locate an "address identifier" (allegedly a URL). The analysis may focus on whether the accused system actually performs a search on data identifiers (e.g., textual representations) to find a URL, or if the URL is simply stored as part of the annotation record itself, potentially creating a mismatch with the claim language.

'708 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: The patent specification describes a specific "modified document retrieval technique" involving a mathematical formula for ranking relevance based on word rarity and proximity ('708 Patent, col. 21:30-67). The complaint, however, only makes the conclusory allegation that Smart Search ranks results by "ordering" them. A key factual dispute will likely be whether the accused product's ranking algorithm performs the specific type of quantitative scoring taught in the patent or a simpler form of ordering (e.g., chronological) that might not meet the claim limitation.

V. Key Claim Terms for Construction

• The Term: "annotation" ('287 Patent, Claim 1)

  • Context and Importance: This term is foundational to the '287 patent. Its construction will determine the scope of data structures that can be considered infringing. Practitioners may focus on this term because the defendant may argue it is limited to the specific, structured database tables shown in the patent's embodiments, while the plaintiff will likely advocate for a broader definition covering any form of metadata linked to media content.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes an annotation generally as "meta-information" ('287 Patent, col. 1:60-61) and a "piece of information relating to data" ('287 Patent, col. 2:29-32), which may support a broad construction.
  • Intrinsic Evidence for a Narrower Interpretation: The patent depicts specific embodiments with detailed "Annotation Table" structures, including fields for ANNOTATION_ID, OBJECT_ID, and ANNOTATION_TYPE ('287 Patent, Fig. 10, col. 17:1-34). This may be used to argue that "annotation" requires a specific, formally structured data object.

• The Term: "ranking the relevance" ('708 Patent, Claim 1)

  • Context and Importance: This term captures the core inventive concept alleged for the '708 patent. The infringement analysis will likely turn on whether the accused product's method of "ordering the search results" meets the definition of "ranking the relevance."
  • Intrinsic Evidence for a Broader Interpretation: The plain language of the claim does not specify how the ranking must be performed. The abstract similarly refers to "ranking the relevance" without qualification, which could support a construction that covers any non-random ordering of results based on some criterion of importance ('708 Patent, Abstract).
  • Intrinsic Evidence for a Narrower Interpretation: The specification discloses a specific, detailed mathematical formula for scoring relevance based on a "weighted sum" that considers the distance between query words ('708 Patent, col. 21:30-67, eq. 2). A party could argue that this detailed disclosure defines and limits the claim term to a quantitative, algorithm-driven process, not just any method of ordering.

VI. Other Allegations

• Indirect Infringement: The complaint makes conclusory allegations of indirect infringement under 35 U.S.C. § 271(b) and (c) for all asserted patents (Compl. ¶¶23, 38, 53). However, it does not plead specific facts to support the required elements of knowledge and intent for induced infringement or the elements for contributory infringement, such as identifying instructions or components sold for an infringing purpose.

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

1. A core issue will be one of definitional scope: can the term "ranking the relevance," as used in the ’708 patent, be construed to cover the general "ordering the search results" as alleged in the complaint, or is it limited by the specification to the specific quantitative scoring algorithm disclosed as the preferred embodiment?

2. A key evidentiary question will be one of functional operation: does the accused Smart Search feature perform two distinct and sequential "searching" steps as required by Claim 1 of the ’287 patent—one to find an annotation and a second to find an address—or does it utilize a single, integrated search mechanism that may not align with the literal claim language?