DCT
1:19-cv-00183
Uniloc 2017 LLC v. Vudu Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Uniloc 2017, LLC (Delaware)
- Defendant: Vudu, Inc. (Delaware)
- Plaintiff’s Counsel: Farnan LLP
- Case Identification: 1:19-cv-00183, D. Del., 01/30/2019
- Venue Allegations: Venue is based on Defendant Vudu, Inc. being a Delaware corporation, incorporated in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Vudu video-on-demand service infringes three patents related to tracking media presentations, coding digital images for compression, and performing concurrent motion estimation in video encoding.
- Technical Context: The technologies at issue relate to the backend architecture of video streaming services, specifically how user engagement is measured and how video data is efficiently compressed for delivery over a network.
- Key Procedural History: Subsequent to the filing of this complaint, the asserted claims of two of the three patents-in-suit were cancelled in inter partes review (IPR) proceedings at the U.S. Patent and Trademark Office. The IPR certificate for the ’609 patent, issued September 20, 2021, confirms the cancellation of claims 1-3, including asserted claim 1. The IPR certificate for the ’005 patent, issued August 31, 2021, confirms the cancellation of claims 1-16 and 39-42, including asserted claim 1. This procedural history raises a threshold question about the viability of the infringement counts for the ’609 and ’005 patents.
Case Timeline
| Date | Event |
|---|---|
| 1999-04-30 | ’005 Patent Priority Date |
| 2001-03-06 | ’118 Patent Priority Date |
| 2003-02-11 | ’005 Patent Issue Date |
| 2005-05-17 | ’118 Patent Issue Date |
| 2008-08-21 | ’609 Patent Priority Date |
| c. 2010 | Vudu encoding practices described in cited article |
| 2013-03-26 | ’609 Patent Issue Date |
| 2019-01-30 | Complaint Filing Date |
| 2021-08-31 | ’005 Patent IPR Certificate issued, cancelling claim 1 |
| 2021-09-20 | ’609 Patent IPR Certificate issued, cancelling claim 1 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,407,609 - "System and Method For Providing And Tracking The Provision Of Audio And Visual Presentations Via A Computer Network"
The Invention Explained
- Problem Addressed: The patent describes the difficulty for internet users to find specific content due to the vast amount of available information and the limitations of conventional search engines, which could be manipulated. (’609 Patent, col. 1:50-2:3).
- The Patented Solution: The invention proposes a client-server architecture where a first computer system provides a user with a web page, identifier data, and a timer "applet." This web page causes the digital media to be streamed from a separate, second computer system (e.g., a CDN). The timer applet on the user's computer periodically signals back to the first computer system, which stores this data to track the amount of time the user has streamed the content. (’609 Patent, Abstract; col. 2:13-34).
- Technical Importance: This system decouples the user interface and tracking functions from the high-bandwidth content delivery function, an architecture that can enhance scalability and enable business models based on measured content consumption. (Compl. ¶13).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶16).
- The essential elements of claim 1 are:
- A method for tracking digital media presentations delivered from a first computer system to a user's computer.
- Providing a corresponding web page for each digital media presentation.
- Providing identifier data to the user's computer.
- Providing an "applet" to the user's computer, which operates as a timer.
- The first computer system receiving a portion of the identifier data from the user's computer "responsively to the timer applet each time a predetermined temporal period elapses."
- Storing data indicative of the received identifier data.
- Each webpage causes media data to be streamed from a second computer system distinct from the first.
- The stored data is indicative of the amount of time the media is streamed.
U.S. Patent No. 6,895,118 - "Method of Coding Digital Image Based on Error Concealment"
The Invention Explained
- Problem Addressed: The patent identifies that prior art video compression techniques that intentionally dropped data blocks to save bandwidth could be inefficient or cause synchronization problems for the decoder. (’118 Patent, col. 1:14-42).
- The Patented Solution: The invention describes a method where, before coding, the system estimates a macroblock's "capacity to be reconstructed" by the decoder using error concealment techniques. Based on this estimation, a decision is made whether to exclude (i.e., not code) the macroblock. After one or more macroblocks are excluded, a "resynchronization marker" is inserted into the data stream, allowing the decoder to recover. (’118 Patent, Abstract; col. 2:11-27).
- Technical Importance: This approach allows for more intelligent lossy compression by making data-discarding decisions based on the predicted ability of the decoder to compensate for the loss, aiming for a better balance of file size and visual quality. (Compl. ¶34).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶9, p. 12).
- The essential elements of claim 1 are:
- A method of coding a digital image comprising macroblocks in a binary data stream.
- An "estimation step" for a macroblock of its capacity to be reconstructed via an error concealment method.
- A "decision step" for the macroblock to be excluded from coding.
- The decision to exclude is made "on the basis of the capacity of such macroblock to be reconstructed."
- A step of "inserting a resynchronization marker into the binary data stream after the exclusion of one or more macroblocks."
U.S. Patent No. 6,519,005 - "Method of Concurrent Multiple-Mode Motion Estimation For Digital Video"
Technology Synopsis
The patent addresses the computationally intensive process of "motion estimation" used in video compression standards like MPEG, where encoders search for matching blocks between frames to reduce redundant data. (’005 Patent, col. 3:25-39; Compl. ¶21, p. 17). The invention provides a method to perform motion estimation for multiple different prediction types (e.g., frame-based, field-based) concurrently within a single search operation, which is described as being faster and more efficient than performing a separate search for each mode. (’005 Patent, Abstract; col. 1:6-11).
Asserted Claims
Claim 1 is asserted. (Compl. ¶26, p. 19).
Accused Features
The accused features are Vudu's H.264 encoders, which allegedly use multiple prediction modes for motion estimation and perform this analysis concurrently to determine the optimal mode for compressing video streams. (Compl. ¶¶27-29, pp. 19, 22).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the Vudu video-on-demand service, encompassing its website, backend servers, and the H.264 video encoders used to process its content library. (Compl. ¶¶2, 15; ¶8, p. 12).
Functionality and Market Context
- The complaint describes the Vudu service as a platform that delivers digital media presentations to users over the internet. (Compl. ¶17). Its functionality involves a user selecting content from a webpage hosted on a Vudu server, which then triggers the streaming of video content from a separate content delivery network (CDN), identified as Akamai. (Compl. ¶¶18, 23-24).
- The service allegedly tracks a user's viewing progress to allow playback to be resumed, a feature the complaint offers as evidence of its infringement theory for the '609 Patent. (Compl. ¶21). A screenshot from the Vudu interface shows a movie page with a "Resume" button and a progress bar. (Compl. p. 6).
- For its video compression, Vudu is alleged to use H.264 encoders that employ techniques like "skipped macroblocks" and multiple motion estimation modes to optimize video quality and delivery. (Compl. ¶10, p. 12; ¶29, p. 22). The complaint includes a quote from a 2010 Business Insider article praising the quality of Vudu's video streams. (Compl. p. 13).
IV. Analysis of Infringement Allegations
’609 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a corresponding web page to the user's computer for each digital media presentation to be delivered using the first computer system | Vudu provides a unique webpage for each movie, such as the one for "Wild Wild West." This page is hosted on a Vudu server (the "first computer system"). A screenshot displays the webpage for the movie "Wild Wild West." (Compl. p. 5). | ¶18 | col. 2:15-18 |
| providing an applet to the user's computer for each digital media presentation to be delivered using the first computer system, wherein the applet is operative by the user's computer as a timer | The Vudu website provides a media player that allegedly functions as the claimed "applet" and "keeps track of the user's progress using a timer." | ¶20 | col. 2:19-22 |
| receiving at least a portion of the identifier data from the user's computer responsively to the timer applet each time a predetermined temporal period elapses using the first computer system | The complaint infers this step from the fact that Vudu maintains a viewing history that is "updated continuously." It alleges this indicates that the user's computer sends periodic updates at regular intervals to Vudu's servers, reflecting the use of a timer. | ¶21 | col. 2:22-25 |
| storing data indicative of the received at least portion of the identifier data using the first computer system | The user's viewing history is stored by Vudu, as evidenced by the progress bar on the movie page that updates as the user watches. | ¶22 | col. 2:25-27 |
| wherein each provided webpage causes corresponding digital media presentation data to be streamed from a second computer system distinct from the first computer system directly to the user's computer independent of the first computer system | The complaint alleges that video content is streamed from a CDN (Akamai), which is the "second computer system," distinct from the Vudu website server. A screenshot of Chrome Developer tools shows requests being made to an "akamaized.net" server address. (Compl. p. 9). | ¶¶23-24 | col. 2:27-31 |
| and wherein the stored data is indicative of an amount of time the digital media presentation data is streamed from the second computer system to the user's computer | The stored data, which reflects the user's viewing position and duration, indicates the amount of time the presentation has been streamed from the CDN. | ¶25 | col. 2:31-34 |
Identified Points of Contention (’609 Patent)
- Scope Questions: A central question is whether the term "applet," rooted in the patent's 2008 priority date, can be construed to read on the functionality of a modern, browser-integrated media player, which the complaint alleges is the infringing component.
- Technical Questions: The infringement theory for periodic, timer-based tracking is inferential. It rests on the existence of a "resume playback" feature. A key factual question is whether the accused Vudu system actually receives updates at "predetermined temporal period[s]" as claimed, or if it uses a different mechanism, such as a single "on-close" or "on-pause" event, to record the user's last position.
’118 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an estimation step, for a macroblock, of a capacity to be reconstructed via an error concealment method | Vudu's H.264 encoders allegedly perform this step by supporting "skipped macroblocks." The complaint alleges that before coding, an estimation is made of whether the macroblock can be reconstructed by examining its motion characteristics and checking for all-zero quantized transform coefficients, which provides an indication of its capacity to be reconstructed. | ¶13, p. 14 | col. 2:11-14 |
| a decision step for the macroblock to be excluded from the coding, a decision to exclude a macroblock from coding being made on the basis of the capacity of such macroblock to be reconstructed | The complaint cites external documentation on the H.264 standard's "Skipped Mode," which states that if a macroblock has certain motion characteristics and no non-zero quantized transform coefficients, "then it is flagged as skipped." This flagging is alleged to be the claimed decision to exclude. A visual from an external blog post describes this "Skipped Mode." (Compl. p. 15). | ¶14, p. 15 | col. 2:15-18 |
| a step of inserting a resynchronization marker into the binary data stream after the exclusion of one or more macroblocks | The complaint alleges that skipped macroblocks are communicated with a "mb_skip_flag = 1". This flag is asserted to be the claimed "resynchronization marker." A diagram from an external source shows a "Skip indication" within a slice of video data. (Compl. p. 16). | ¶15, p. 15 | col. 2:23-27 |
Identified Points of Contention (’118 Patent)
- Scope Questions: The infringement theory relies heavily on equating the general operation of the H.264 standard with the specific claim limitations. A key question of scope will be whether the term "resynchronization marker," which the patent discusses in the context of substantial MPEG-4 data structures, can be construed to cover a single "mb_skip_flag" bit as alleged in the complaint.
- Technical Questions: What evidence does the complaint provide that the H.264 standard's check for specific motion characteristics and zero coefficients is equivalent to the claimed "estimation... of a capacity to be reconstructed," as opposed to simply being a set of deterministic encoding rules? The analysis may turn on whether the H.264 process is merely a rule-based shortcut or a genuine estimation of reconstructability as taught in the patent.
V. Key Claim Terms for Construction
’609 Patent
- The Term: "applet"
- Context and Importance: This term is central to infringement, as the complaint identifies Vudu's media player as the claimed "applet." (Compl. ¶20). Given the patent's 2008 priority date, the definition of "applet" is critical for determining whether the claims cover modern web technologies like HTML5/JavaScript-based players, or if they are limited to older technologies like Java Applets.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a specific definition, instead referring generally to "computer executable code." (’609 Patent, col. 4:40-50). A party could argue for a functional definition, covering any client-side code that performs the claimed timer and signaling functions.
- Evidence for a Narrower Interpretation: The term "applet" at the time of the invention often connoted a self-contained, downloadable program (like a Java Applet or Flash Applet) that runs in a sandboxed environment, distinct from the main webpage's script. A party could argue the patent uses the term in this more limited, technologically specific sense.
’118 Patent
- The Term: "resynchronization marker"
- Context and Importance: The entire infringement theory for the final step of claim 1 rests on the "mb_skip_flag" being a "resynchronization marker." (Compl. ¶15, p. 15). If the flag is not construed as such, this element is not met.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition. A broader interpretation might argue that any data which signals to the decoder that data has been omitted and allows it to re-synchronize its state qualifies, which a skip flag arguably does.
- Evidence for a Narrower Interpretation: The specification repeatedly discusses resynchronization markers in the context of the MPEG-4 standard, where they are described as part of a "video packet" header used to restart the decoding process after an error. (’118 Patent, col. 4:37-52). This suggests a more substantial data structure than a single bit flag, raising the question of whether the claim term requires a marker that enables recovery from a more general transmission error, not just a signaled data omission.
VI. Other Allegations
- Indirect Infringement: The complaint makes general allegations of direct and indirect infringement. (Compl. ¶¶1, 7). However, the specific factual counts describe a theory of direct infringement, where Vudu itself, through the operation of its servers in combination with user computers, performs all the steps of the claimed methods. No specific facts are alleged to support a separate theory of inducement or contributory infringement, such as allegations that Vudu instructs its users to perform infringing acts.
- Willful Infringement: The complaint does not allege facts to support willful infringement, such as pre-suit knowledge of the patents or egregious conduct.
VII. Analyst’s Conclusion: Key Questions for the Case
- Case Viability: The primary threshold issue for this case is one of viability in light of post-grant review. Given that the asserted claims for two of the three patents (claim 1 of the ’609 patent and claim 1 of the ’005 patent) were cancelled in inter partes review proceedings after the complaint was filed, the central question is what legal basis, if any, remains for those infringement counts.
- Technological Translation: For the '609 patent, a key question is one of definitional scope across technological evolution. Can the term "applet," from a 2008-priority patent, be construed to cover a modern, integrated browser-based media player? This will likely depend on whether the court adopts a narrow, technology-specific definition or a broader, functional one.
- Functional and Structural Equivalence: For the remaining '118 patent, the dispute may center on functional equivalence. Does the single-bit "mb_skip_flag" in the H.264 standard function as the "resynchronization marker" described in the patent, or is there a fundamental structural and functional mismatch with the more substantial markers contemplated in the patent’s specification?