DDC Research Tech LLC v. NCH Software Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: DDC Research Technologies LLC (Texas)
  • Defendant: NCH Software, Inc. (Delaware)
  • Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
• Case Identification: 1:18-cv-01051, D. Del., 07/16/2018
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and therefore a resident of the district.
• Core Dispute: Plaintiff alleges that Defendant’s video conversion software infringes a patent related to methods for converting multi-file DVD-formatted data into a single, MPEG-4 compliant file structure.
• Technical Context: The technology addresses the challenge of adapting complex, multi-file video formats like DVD for streamlined internet distribution and playback on devices expecting single-file formats like MPEG-4.
• Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.

Case Timeline

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

U.S. Patent No. 8,320,733 - "Method of Preparing DVD-Video Formatted Data, Method for Reconstructing DVD-Video Data and DVD-Video Data Structure"

• Patent Identification: U.S. Patent No. 8,320,733, "Method of Preparing DVD-Video Formatted Data, Method for Reconstructing DVD-Video Data and DVD-Video Data Structure," issued November 27, 2012.

The Invention Explained

• Problem Addressed: The patent describes a conflict between two video data formats. The DVD-Video format uses a complex directory structure with multiple files where media payload data is interspersed with control information (e.g., packet headers) (’733 Patent, col. 2:4-8). This structure is described as not "well suited for a comfort download via the internet" (’733 Patent, col. 2:60-62). In contrast, the MPEG-4 format is typically a single file, but decoders for this format often expect continuous "chunks" of payload data without the interspersed control information found on DVDs (’733 Patent, col. 2:16-25).
• The Patented Solution: The invention proposes a method and apparatus to convert the DVD format into a single, MPEG-4 compliant "data entity" (’733 Patent, Abstract). This is achieved using a "data entity builder" that regenerates the original media files within the new single-file structure and, crucially, also generates a "payload data schedule" (’733 Patent, col. 3:23-34). This schedule functions as a map, providing information that indicates the "start of payload information" for each media block, thereby allowing a decoder to read the payload data while skipping over the interspersed control blocks from the original DVD format (’733 Patent, col. 3:32-34; col. 4:10-18).
• Technical Importance: This approach creates a bridge technology, enabling the content of a feature-rich DVD to be repackaged into a single, downloadable file that is compatible with standard MPEG-4 players, without discarding the original control and navigation data (’733 Patent, col. 2:58-67).

Key Claims at a Glance

• The complaint’s allegations focus on independent claim 1 (Compl. ¶¶16-23).
• The essential elements of independent claim 1 include:
  • An apparatus for converting a first media representation (e.g., DVD) into a second (e.g., MPEG-4).
  • The first representation has media payload blocks separated by control blocks.
  • A "data entity builder" generates the second representation.
  • The builder regenerates the media files, preserving the structure of payload blocks separated by control blocks.
  • The builder also generates a "payload data schedule" with information indicating the start of each payload block.
  • The second representation is an "MPEG-4 conforming data entity" where the payload schedule is in a "moov" atom and the regenerated media file is in an "mdat" atom.

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is Defendant's "Prism Video Converter" software (Compl. ¶16).

Functionality and Market Context

• The complaint alleges the Accused Product functions to convert media from a DVD format into an MPEG-4 format (Compl. ¶16).
• Specifically, it is alleged to allow customers to convert a "plurality of media files" in a DVD format into a "single MPEG-4 media file" (Compl. ¶16). The complaint alleges this process involves generating a "payload data schedule" for the resulting MPEG-4 file and placing it within a "moov" atom, while the media itself is placed in an "mdat" atom (Compl. ¶¶20-22).
• The complaint asserts the product is made, used, sold, and offered for sale in the United States but provides no further detail on its market position (Compl. ¶27).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’733 Patent Infringement Allegations

Identified Points of Contention

• Technical Questions: The complaint’s infringement allegations rely heavily on citations to external technical standards for MPEG-4 (e.g., ISO/IEC 14496) to define the structure of the output file (Compl. ¶¶19-22, fns. 4-9). A central question will be whether the Accused Product’s actual output, when analyzed, conforms to these allegations. For example, what evidence demonstrates that the metadata in the "moov" atom performs the specific function of a "payload data schedule" by indicating the "start of payload information" needed to skip the "regenerated... control block" as claimed?
• Scope Questions: The complaint alleges that MPEG-4 structures like an "IPMP Control Block" and "Item Information Block(s)" constitute the "regenerated media file control block" required by the claim (Compl. ¶19). A dispute may arise over whether these MPEG-4 native structures are, in fact, "regenerated" from the original DVD format, or if they are newly created data that do not correspond to the control blocks of the first representation.

V. Key Claim Terms for Construction

The Term: "payload data schedule"

Context and Importance

This term is the core of the claimed invention, as it enables a decoder to parse a file that unconventionally mixes DVD and MPEG-4 concepts. The construction of this term will be critical to determining whether the metadata generated by the Accused Product infringes.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The claim language itself requires only "schedule information indicating, for each regenerated media file payload block, a start of payload information" (’733 Patent, col. 3:35-37). Plaintiff may argue this covers any data structure within the "moov" atom that allows a decoder to locate and play the media payloads in the "mdat" atom.
• Evidence for a Narrower Interpretation: The specification provides a specific embodiment of the schedule as a table listing a "Start address" for each payload (e.g., ’733 Patent, Fig. 12). Defendant may argue the term should be limited to such an explicit address-mapping table, rather than encompassing the more complex, interrelated set of tables standard in an MPEG-4 "moov" atom.

The Term: "regenerate" / "regenerated"

Context and Importance

The claim requires the builder to "regenerate" the media files such that a "regenerated media file control block" is located between payload blocks. The meaning of "regenerate" is key to whether the Accused Product's output file, which is in a new format (MPEG-4), can be considered to contain "regenerated" components from the old format (DVD).

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: The patent suggests the process involves copying or carrying over the original file structure into a new container. The specification notes that "the at least one regenerated media file has the same structure as the original media file" (’733 Patent, col. 6:42-44). This may support an argument that "regenerate" means to preserve the logical sequence of control and payload data, even if the underlying format changes.
• Evidence for a Narrower Interpretation: The term could be construed more narrowly to require a near-identical, bit-for-bit copy of the original control blocks. Defendant may argue that if the Accused Product creates new, MPEG-4-native control blocks (as alleged in Compl. ¶19) instead of directly copying the DVD control blocks, it is not "regenerating" them as required by the claim.

VI. Other Allegations

Indirect Infringement

• The complaint alleges active inducement, stating that Defendant sells, offers for sale, and advertises the Accused Product with the specific intent that its customers use it to perform the infringing method (Compl. ¶35). The factual basis cited is Defendant's marketing of the product through its website (Compl. ¶35, fn. 10).

Willful Infringement

• The complaint alleges that Defendant has had knowledge of the ’733 patent "at least as of the service of the present complaint" (Compl. ¶26, ¶34). This allegation does not assert pre-suit knowledge but forms a basis for potential post-filing willful infringement.

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

• A central issue will be one of technical mapping: do the data structures within the MPEG-4 file created by the Accused Product actually perform the functions recited in the claims? Specifically, does the file contain a "payload data schedule" that operates to identify the start of payload blocks to allow a decoder to skip "regenerated" control blocks originating from the source DVD? The complaint's reliance on external standards rather than direct analysis of the accused file leaves this as a key evidentiary question.
• The case will also likely turn on a fundamental question of claim construction: can the term "regenerated... control block", which originates in a DVD-format context, be construed to read on the MPEG-4-native structures (e.g., "IPMP Control Block") that the complaint alleges are present in the accused output file? The outcome may depend on whether "regenerate" requires preserving the original data itself or merely its logical function in a new format.