Contemporary Display LLC v. Verizon Communications Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Contemporary Display LLC (Texas)
  • Defendant: Verizon Communications Inc. (Delaware)
  • Plaintiff’s Counsel: Devlin Law Firm LLC
• Case Identification: 1:19-cv-00225, D. Del., 02/01/2019
• Venue Allegations: Venue is asserted on the basis that Defendant is incorporated in Delaware and therefore resides in the district.
• Core Dispute: Plaintiff alleges that Defendant’s Verizon Fios Multi-Room DVR and related systems infringe three patents related to transferring computer sessions between devices and managing on-screen television inputs.
• Technical Context: The patents address technologies for maintaining user sessions across different devices (e.g., from a PC to a mobile device) and for simplifying the user interface for selecting between various television input sources.
• Key Procedural History: The complaint alleges Defendant had pre-suit knowledge of U.S. Patent Nos. 7,487,248 and 7,809,842 because they were cited by a USPTO examiner during the prosecution of patents assigned to Verizon. Subsequent to the filing of this complaint, inter partes review (IPR) proceedings were initiated against the ’842 and ’219 patents. The provided IPR certificates indicate that all asserted claims of U.S. Patent No. 7,809,842 (claims 1-20) and U.S. Patent No. 8,863,219 (claims 1-3 and 5-7) were cancelled. These post-filing developments may significantly impact the viability of the infringement counts for those two patents.

Case Timeline

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

U.S. Patent No. 7,487,248 - "Method and System for Transferring a Computer Session Between Devices," issued February 3, 2009

The Invention Explained

• Problem Addressed: The patent describes the problem of a user engaged in a computer session (such as an email or chat session) on one device, like a desktop PC, who needs to leave but wishes to continue the session on a mobile device without a cumbersome and context-losing manual transfer process (’248 Patent, col. 1:24-49).
• The Patented Solution: The invention provides a method where a user can selectively trigger a transfer of the session. In response, the system determines the "context" of the session on the first device (e.g., user ID, conversation history) and transfers this context to a second device, allowing the session to be continued seamlessly (’248 Patent, col. 2:1-18). The patent describes several transfer mechanisms, including using the first device as a "proxy" for the second device after the transfer (’248 Patent, Fig. 1B).
• Technical Importance: The technology aimed to improve user mobility by making online sessions portable and persistent across different types of user devices, a significant challenge as wireless and mobile computing became more prevalent (’248 Patent, col. 1:15-23).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶17).
• Essential elements of claim 1 include:
  • Enabling a user to initiate a computer session via a first device, where the session is facilitated by a link between the first device and a third device over a network.
  • Enabling the user to selectively initiate a transfer of the session to a second device.
  • Establishing a second communication link between the first and second devices.
  • Enabling the session to be continued on the second device by employing the first device as a proxy for the second device.
  • After transfer, communications between the second device and the third device are routed through the first device via the first and second communication links.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 7,809,842 - "Transferring Sessions Between Devices," issued October 5, 2010

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the ’248 Patent, the ’842 Patent addresses the same technical problem of seamlessly transferring an active computer session from a stationary device to a mobile one (’842 Patent, col. 1:36-48).
• The Patented Solution: The patent describes an apparatus (rather than a method) configured to perform the session transfer. The apparatus is configured to receive a transfer request, obtain "session context information," and use that information to continue the session, with the original device acting as a proxy for the new device (’842 Patent, Abstract; col. 9:35-65).
• Technical Importance: This patent builds on the same concepts as its parent, providing protection for the system-level apparatus that enables the session transfer functionality, which is crucial for implementing such services (’842 Patent, col. 1:12-16).

Key Claims at a Glance

• The complaint asserts independent claim 18 (Compl. ¶36).
• Essential elements of claim 18 include:
  • An apparatus configured to continue a computer session initially between a first and second device, via transfer from the first device to the apparatus.
  • The first device is configured to operate as a proxy for the apparatus after transfer.
  • The apparatus has software configured to enable a user to request transfer, establish a communication link with the first device, receive session context information, and use that information to continue the session.
  • After transfer, communications between the apparatus and the second device are sent to and received from the first device.
• The complaint does not explicitly reserve the right to assert dependent claims.
• Note: The provided IPR Certificate (US 7,809,842 K1) states that claims 1-20, including the asserted claim 18, have been cancelled.

U.S. Patent No. 8,863,219 - "On Screen Television Input Management," issued October 14, 2014

Technology Synopsis

The patent addresses the difficulty users face in selecting the correct input source on a television with multiple connected devices (e.g., DVD player, cable box, PC) (’219 Patent, col. 1:53-58). The invention is an on-screen display (OSD) system that automatically identifies the input signals from various sources and presents them in a user-friendly menu, which may include live video content from the sources themselves to aid selection (’219 Patent, col. 2:4-10; Abstract).

Asserted Claims

Independent claim 1 is asserted (Compl. ¶53).

Accused Features

The complaint accuses the "Verizon Fios system" of infringing by providing an on-screen menu for navigating and selecting television input sources (Compl. ¶51-52).

Note

The provided IPR Certificate (US 8,863,219 K1) states that claims 1-3 and 5-7, including the asserted claim 1, have been cancelled.

III. The Accused Instrumentality

Product Identification

The "Verizon Fios Multi-Room DVR" is the accused instrumentality for the ’248 and ’842 patents (Compl. ¶15, ¶34). The broader "Verizon Fios system" is accused of infringing the ’219 patent (Compl. ¶51).

Functionality and Market Context

The complaint alleges that the Fios Multi-Room DVR system allows a user to begin a "computer session" (e.g., watching a video stream) on a primary DVR (the "first device") and then transfer that session to a secondary receiver or client device (the "second device") in another room (Compl. ¶16, ¶35). In this configuration, the primary DVR allegedly acts as a "proxy," routing communications for the secondary device. For the ’219 patent, the accused functionality is the on-screen menu system used to manage and select between different input sources connected to the television system (Compl. ¶52). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

7,487,248 Patent Infringement Allegations

8,487,248 Patent Infringement Allegations

The complaint references an exhibit for its claim chart which was not provided with the complaint document. The following prose summary is based on the narrative allegations.

The complaint alleges that the Verizon Fios Multi-Room DVR is an apparatus that infringes at least claim 18 of the ’842 Patent (Compl. ¶36). The infringement theory is that a client set-top box (the "apparatus") is configured to continue a computer session transferred from a main DVR (the "first device"). The main DVR allegedly operates as a proxy for the client box. The software on the client box is alleged to perform the claimed functions of enabling a user to request the transfer, establishing a link to the main DVR, receiving "session context information" from the main DVR, and continuing the session, wherein communications are routed through the main DVR (Compl. ¶35).

• Identified Points of Contention:
  • Definitional Scope: A primary question for the ’248 and ’842 patents is whether a "computer session" as defined in the patents, which provides examples like "e-mail message" and "chat session" (’248 Patent, col. 1:28-32), can be construed to read on the streaming of video content in a multi-room DVR environment.
  • Technical Functionality: The infringement theory hinges on the allegation that the main DVR acts as a "proxy" for the client devices. A key technical question will be whether the communication architecture of the Fios system meets the specific claim requirement that communications between the second device and the third device (e.g., a Verizon headend server) are "routed through the first device" after the transfer. The evidence presented to prove this specific data path will be critical.

V. Key Claim Terms for Construction

For U.S. Patent No. 7,487,248 (Claim 1)

• The Term: "computer session"

• Context and Importance: This term's scope is central to whether the patent applies to the accused DVR product. If construed narrowly to only include interactive text-based applications like those explicitly mentioned in the specification, the infringement case may be more difficult. If construed broadly to cover any stateful data exchange, including video streaming, it may support the plaintiff's theory.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The Summary of the Invention speaks generally about transferring a "computer session between two devices" without limiting it to specific types, suggesting a broader applicability (’248 Patent, col. 2:51-53).
  • Evidence for a Narrower Interpretation: The Background section explicitly frames the problem in the context of "writing an e-mail message or interacting with another via a chat session," which could be used to argue the invention was intended to solve problems specific to those applications (’248 Patent, col. 1:28-32).

• The Term: "employing the first device as a proxy"

• Context and Importance: The definition of "proxy" is critical to infringement. The dispute will likely focus on the degree of control and the specific routing functions the first device must perform to qualify as a proxy under the patent.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not appear to provide a specific, limiting definition of "proxy," potentially allowing for a plain and ordinary meaning that could cover a range of intermediary functions.
  • Evidence for a Narrower Interpretation: Figure 1B and its accompanying description show a specific "Proxy Service Data Center" (68) and a "proxy application" (74), which could be argued to define the required proxy structure more narrowly than a simple data forwarder (’248 Patent, Fig. 1B; col. 4:35-38).

VI. Other Allegations

• Indirect Infringement: For all three patents, the complaint alleges induced infringement. The basis for this allegation is that Verizon provides customers with instructional materials, including "training videos, demonstrations, brochures, installation and user guides," that allegedly instruct them on how to use the accused systems in an infringing manner (Compl. ¶18, ¶37, ¶54).
• Willful Infringement: The complaint alleges willful infringement for all three patents. For the ’248 and ’842 patents, the claim is based on alleged pre-suit knowledge. Plaintiff alleges that Verizon knew or should have known of these patents because they were cited by the USPTO examiner during the prosecution of U.S. Patent Nos. 8,695,030 and 8,213,920, which are assigned to "Verizon Patent and Licensing, Inc." (Compl. ¶23, ¶41). For the ’219 Patent, willfulness is based on notice provided by the service of the complaint itself (Compl. ¶56).

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

1. Impact of IPRs: The most significant threshold issue is the legal effect of the post-filing IPR proceedings that resulted in the cancellation of all asserted claims for the ’842 and ’219 patents. This development raises the question of whether the infringement counts related to these two patents can proceed.
2. Claim Scope vs. Accused Technology: For the remaining ’248 patent, a core issue will be one of definitional scope. Can the term "computer session," which is described in the patent's background with examples of email and instant messaging, be construed to cover the streaming video functionality of the accused multi-room DVR system?
3. Evidentiary Proof of Technical Operation: The infringement case for the ’248 patent will depend on a key evidentiary question. Does the complaint, and the evidence that follows, establish that the accused Fios DVR system operates in the specific manner required by the claims, particularly the requirement that the main DVR acts as a "proxy" by routing communications between the client device and Verizon's network servers?