DCT

1:19-cv-00183

Uniloc 2017 LLC v. Vudu Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-00183, D. Del., 04/09/2019
  • Venue Allegations: Venue is alleged to be proper as Defendant Vudu, Inc. is a Delaware corporation and transacts business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Vudu Inc video streaming service infringes three patents related to tracking digital media presentations and digital video compression technologies.
  • Technical Context: The patents address two distinct technology areas: tracking user engagement with streamed media content and fundamental methods for compressing digital video data.
  • Key Procedural History: The complaint asserts claims that were subsequently challenged in inter partes review (IPR) proceedings before the U.S. Patent and Trademark Office. The asserted claims of U.S. Patent Nos. 8,407,609 (claims 1-3) and 6,519,005 (claims 1-16, 39-42) were cancelled in IPRs that concluded after this First Amended Complaint was filed.

Case Timeline

Date Event
1999-04-30 Priority Date for U.S. Patent No. 6,519,005
2001-03-06 Priority Date for U.S. Patent No. 6,895,118
2003-02-11 Issue Date for U.S. Patent No. 6,519,005
2005-05-17 Issue Date for U.S. Patent No. 6,895,118
2008-08-21 Priority Date for U.S. Patent No. 8,407,609
2013-03-26 Issue Date for U.S. Patent No. 8,407,609
2019-04-09 First Amended Complaint Filed
2019-05-28 IPR filed against U.S. Patent No. 6,519,005 (IPR2019-01126)
2019-07-22 IPR filed against U.S. Patent No. 8,407,609 (IPR2019-01367)
2021-08-31 IPR Certificate Issued Cancelling Asserted '005 Patent Claims
2021-09-20 IPR Certificate Issued Cancelling Asserted '609 Patent Claims

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"

  • Patent Identification: U.S. Patent No. US8407609B2, "System and Method For Providing And Tracking The Provision Of Audio And Visual Presentations Via A Computer Network," issued March 26, 2013.

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of tracking user engagement (e.g., watch time) with digital media when the content is streamed from a remote or third-party storage resource over which the primary service operator has no direct control (’609 Patent, col. 12:36-45; Compl. ¶14).
  • The Patented Solution: The invention proposes a method where a "first computer system" (e.g., an operator's web server) delivers a webpage containing an "applet" that functions as a timer to a user's computer. This applet periodically reports usage data back to the first system. Meanwhile, a "second computer system" (e.g., a third-party content delivery network) streams the actual media content directly to the user, independent of the first system. This architecture allows the operator to track viewing duration without hosting the media itself (’609 Patent, col. 13:24-14:8; Compl. ¶15-16).
  • Technical Importance: This approach aimed to enable content aggregators to gather detailed analytics on user viewing habits for content hosted by disparate, independent third parties, which could be used to inform advertising and content strategy (’609 Patent, col. 11:47-58).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶21).
  • Essential elements of claim 1 include:
    • 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 media presentation.
    • Providing identifier data to the user's computer.
    • Providing an applet to the user's computer that is operative as a timer.
    • Receiving identifier data from the user's computer responsive to the timer applet each time a predetermined period elapses.
    • Storing data indicative of the received identifier data.
    • Wherein the webpage causes media data to be streamed from a second computer system distinct from the first computer system.
    • Wherein the stored data is indicative of the amount of time the media is streamed and the cumulative time the web page was displayed.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,895,118 - "Method Of Coding Digital Image Based on Error Concealment"

  • Patent Identification: U.S. Patent No. US6895118B2, "Method Of Coding Digital Image Based on Error Concealment," issued May 17, 2005.

The Invention Explained

  • Problem Addressed: The patent identifies drawbacks in prior art video compression methods for handling "excluded" macroblocks (blocks of pixels intentionally not coded to save data). Prior methods, which either replaced the excluded blocks with constant data or used extra bits to signal their addresses, could lead to "graphical 'lag' errors" or visual artifacts and did not optimally reduce the data stream size (’118 Patent, col. 1:56-67; Compl. ¶41).
  • The Patented Solution: Instead of replacing the excluded macroblock or modifying address words, the invention proposes inserting a "resynchronization marker" into the binary data stream at the point where the macroblock was excluded. This marker allows the decoder to resynchronize and conceal the missing block's content, purportedly avoiding the visual errors of prior art while achieving better data reduction (’118 Patent, col. 2:6-15; Compl. ¶45).
  • Technical Importance: The method sought to improve compression efficiency and visual quality in low-bit-rate video coding by providing a more robust way to handle intentionally skipped macroblocks that was compatible with standards providing for point resynchronization (’118 Patent, col. 2:1-6).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶53).
  • Essential elements of claim 1 include:
    • A method of coding a digital image comprising macroblocks in a binary data stream.
    • An estimation step to determine a macroblock's capacity to be reconstructed via error concealment.
    • A decision step to exclude a macroblock from coding based on that capacity.
    • Characterized by a step of inserting a resynchronization marker into the binary data stream after the exclusion.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,519,005 - "Method of Concurrent Multiple-Mode Motion Estimation For Digital Video"

  • Patent Identification: U.S. Patent No. US6519005B2, "Method of Concurrent Multiple-Mode Motion Estimation For Digital Video," issued February 11, 2003.
  • Technology Synopsis: The patent addresses inefficiencies in prior art video compression, where determining the best "prediction mode" for a macroblock required performing multiple, sequential motion estimations, a computationally intensive process (’005 Patent, col. 3:15-43; Compl. ¶77). The invention discloses a method to perform motion estimation for multiple prediction modes concurrently during a single search operation, allowing for the simultaneous determination of the optimal mode and its corresponding motion vector, which is faster and more efficient (’005 Patent, col. 3:40-67; Compl. ¶78-79).
  • Asserted Claims: Independent claim 1 (Compl. ¶85).
  • Accused Features: The complaint alleges that Vudu's H.264 encoders infringe by concurrently performing motion estimation for various inter-frame prediction modes (e.g., partitioning a macroblock in different ways) and selecting the optimal mode based on the results (Compl. ¶87-88).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are the Vudu video-on-demand streaming service and the H.264 encoders used to prepare content for that service (collectively, the “Accused Infringing Devices”) (Compl. ¶20, 52, 84).

Functionality and Market Context

  • The Vudu service provides users with access to a library of digital media, such as movies and television shows, via the internet (Compl. ¶22-23). The service allegedly provides webpages for specific content and uses a media player that tracks a user's viewing progress, allowing playback to be resumed (Compl. ¶25-26).
  • The complaint alleges that Vudu uses H.264 encoders to compress and transcode video content (Compl. ¶54-56). The H.264 standard is described as a widely used video compression format that utilizes macroblocks, motion estimation, and various prediction modes, including support for "skipped" macroblocks (Compl. ¶55, 57, 88). A screenshot from a third-party article is provided, which states Vudu uses H.264 and performs multiple encodes to enable adaptive streaming (Compl. p. 21).

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 page for "Wild Wild West." A screenshot of the Vudu webpage for this movie is included in the complaint. (Compl. p. 10). ¶23 col. 13:58-64
providing identifier data to the user's computer using the first computer system The Vudu service requires users to log in to an account to access content, which serves as identifier data. A screenshot shows the user "Jim!" is logged in. (Compl. p. 10). ¶24 col. 6:23-27
providing an applet to the user's computer for each digital media presentation to be delivered...wherein the applet is operative...as a timer The Vudu website provides a media player that tracks the user's progress using a timer. ¶25 col. 13:65-14:8
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 Vudu's system maintains a viewing history for each user that is "updated continuously," even without user input, indicating that the user's computer sends periodic updates to Vudu's servers reflecting the user's current playback position. ¶26 col. 6:4-16
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, which is demonstrated by the display of a progress bar that is updated as the user watches more of the program. ¶27 col. 6:17-22
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 the Vudu website is the "first computer system" and that media is streamed from a "second computer system," specifically a content delivery network (CDN) like Akamai. A developer tools screenshot shows requests to an Akamai server. (Compl. p. 13). ¶28-29 col. 4:15-19
wherein the stored data is indicative of an amount of time the digital media presentation data is streamed...and...of a cumulative time the corresponding web page was displayed The tracked viewing history indicates the duration and position of the stream, which also reflects the time the Vudu webpage for the movie was displayed. ¶30-31 col. 12:56-13:4
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether a third-party CDN, such as Akamai, which is integrated into Vudu's service delivery, qualifies as a "second computer system distinct from the first computer system" and "independent of the first computer system" as required by the claim. A court may need to determine if the operational integration between Vudu's web servers and its CDN partner falls within the scope of this claim language.
    • Technical Questions: The analysis may focus on whether the functionality of the Vudu media player, which is likely implemented using standard web technologies like JavaScript, constitutes an "applet" as that term is used in the patent.

'118 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of coding a digital image comprising macroblocks in a binary data stream The accused devices use H.264 (AVC) streams for coding video, which are binary data streams comprising macroblocks. ¶54-55 col. 5:37-46
an estimation step, for macroblocks, of a capacity to be reconstructed via an error concealment method The H.264 standard supports "skipped macroblocks," and the capacity for a macroblock to be skipped is estimated by examining its motion characteristics and whether it contains non-zero quantized transform coefficients. ¶57 col. 3:1-17
a decision step for macroblocks to be excluded from the coding, a decision...being made on the basis of the capacity...to be reconstructed H.264 encoders perform a decision step to determine if a macroblock should be excluded (skipped) based on its capacity to be reconstructed by inferring motion properties from neighboring blocks. ¶58 col. 3:18-24
characterized in that it also includes 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 an mb_skip_flag = 1, and asserts this flag constitutes the claimed "resynchronization marker." A provided diagram illustrates a "Skip Indication" being inserted into the slice data stream. (Compl. p. 24). ¶59 col. 2:6-9
  • Identified Points of Contention:
    • Scope Questions: The primary point of contention will likely be whether the mb_skip_flag in the H.264 standard can be construed as a "resynchronization marker." The patent specification describes this marker as representing "a certain number of bits... (at least between 17 and 23 bits)" (’118 Patent, col. 2:10-12), which raises the question of whether a single-bit flag meets this claim limitation.
    • Technical Questions: An evidentiary question may be how, precisely, Vudu's H.264 encoders implement the "estimation step." The complaint relies on general descriptions of the H.264 standard, and the specific implementation details of Vudu's proprietary encoders will be relevant to determining infringement.

V. Key Claim Terms for Construction

For the '609 Patent:

  • The Term: "applet"
  • Context and Importance: The claim requires "providing an applet" that acts as a timer. Practitioners may focus on this term because the accused functionality is a "media player" integrated into a website (Compl. ¶25). Defendant may argue that this integrated feature is not an "applet," which historically implied a self-contained, portable program (like a Java Applet), but is rather inseparable code of the webpage itself.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not define "applet" and uses it in a functional sense to describe a component that acts as a timer on the user's computer, which could support interpreting it to cover modern web script functionalities that perform the same role (’609 Patent, col. 13:65-14:2).
    • Evidence for a Narrower Interpretation: The specification is silent on a specific definition, which could lead a court to apply a more conventional, narrower meaning of the term as understood at the time of the invention.

For the '118 Patent:

  • The Term: "resynchronization marker"
  • Context and Importance: This term is the central inventive concept of claim 1. Practitioners may focus on this term because the infringement allegation hinges on equating the H.264 standard's mb_skip_flag with this marker (Compl. ¶59). The patent's own description of the marker's properties creates a significant basis for a dispute over the term's scope.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term is used functionally to describe something inserted into the data stream after an exclusion to allow the decoder to handle the missing data. One might argue that the mb_skip_flag serves this purpose, even if it is technically simpler than the described embodiment.
    • Evidence for a Narrower Interpretation: The specification explicitly states, "The resynchronization marker represents a certain number of bits in the data stream (at least between 17 and 23 bits)" (’118 Patent, col. 2:10-12). This language provides strong evidence that the term requires a multi-bit structure, which would exclude a single-bit mb_skip_flag from its scope.

VI. Other Allegations

  • Indirect Infringement: The complaint does not plead specific facts to support claims of induced or contributory infringement. The allegations are limited to direct infringement (Compl. ¶33, 61, 95).
  • Willful Infringement: The complaint makes no allegations of pre- or post-suit knowledge of the patents that would support a claim for willful infringement. The prayer for relief includes a request for a determination of an exceptional case under 35 U.S.C. § 285, but the body of the complaint does not contain the factual predicate typically required to support such a finding (Compl. Prayer for Relief ¶E).

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

  1. Viability of Asserted Claims: A threshold issue for the '609 and '005 patents is the legal effect of their asserted claims being cancelled in IPR proceedings that concluded after the filing of this complaint. The viability of Counts I and III of the complaint appears questionable in light of these subsequent administrative actions.
  2. Architectural Scope ('609 Patent): A central question for the '609 patent will be one of architectural interpretation: does Vudu's use of an integrated third-party CDN to deliver video satisfy the claim requirement for a "second computer system distinct from" and "independent of" the first computer system that serves the primary webpage?
  3. Definitional Mismatch ('118 Patent): The core of the '118 patent dispute will likely be one of definitional scope: can the term "resynchronization marker," which the patent describes as a multi-bit structure, be construed to read on the single-bit mb_skip_flag used in the accused H.264 standard, or is this a fundamental mismatch in technical definition?