DCT
1:19-cv-00293
Cooltvnetworkcom Inc v. IBM Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CoolTVNetwork.com, Inc. (Florida)
- Defendant: International Business Machines Corporation (New York)
- Plaintiff’s Counsel: Devlin Law Firm LLC; Hansley Law Firm, PLLC
- Case Identification: 1:19-cv-00293, D. Del., 07/12/2019
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant maintains a "brick and mortar location" in Wilmington, DE, where it regularly conducts business.
- Core Dispute: Plaintiff alleges that Defendant’s IBM Watson Media platform infringes a patent related to creating and using multifunctional, interactive "hot spots" within digital video and audio files.
- Technical Context: The technology involves embedding interactive elements within video streams, allowing viewers to perform actions such as purchasing items, participating in polls, or linking to external content, thereby enabling video monetization and enhanced user engagement.
- Key Procedural History: The operative pleading is the Plaintiff's Second Amended Complaint, indicating the case has undergone at least two prior rounds of pleading amendments.
Case Timeline
| Date | Event |
|---|---|
| 2000-06-08 | U.S. Patent No. 7,162,696 Priority Date |
| 2007-01-09 | U.S. Patent No. 7,162,696 Issue Date |
| 2019-07-12 | Plaintiff's Second Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,162,696 - "Method and System for Creating, Using and Modifying Multifunctional Website Hot Spots"
- Patent Identification: U.S. Patent No. 7,162,696, "Method and System for Creating, Using and Modifying Multifunctional Website Hot Spots", issued January 9, 2007.
The Invention Explained
- Problem Addressed: The patent describes a need for interactive technology beyond the then-current "internally static" hyperlinks, which were limited to "preordained functions" and not well-adapted for video files (’696 Patent, col. 1:48-53). The prior art was seen as lacking a system for interactive video hot spots that was "flexible, adaptable... platform independent, multi-tasked, and changeable" (’696 Patent, col. 2:18-22).
- The Patented Solution: The invention is a system and method for creating programmable "hot spots" in digital media files, like video streams. An "expandable menu bar" allows a user to select from a plurality of modes (e.g., shopping, bidding, linking), which defines the function of a hot spot when clicked (’696 Patent, col. 3:3-17). The behavior of these hot spots can be dynamic, changing based on "time stamps" within the video, and they are visualized to the user via "outlines or illumination" (’696 Patent, col. 2:58-59, col. 4:46-50).
- Technical Importance: This technology sought to deepen user interaction with video content, providing a framework for e-commerce and other dynamic functions to be integrated directly into the viewing experience (’696 Patent, col. 1:53-60).
Key Claims at a Glance
- The complaint asserts independent method claim 17 (Compl. ¶12, ¶21).
- The essential elements of independent claim 17 include:
- Defining at least one hot spot via instructions on a tangible medium.
- Accessing the hot spot from a globally accessible network.
- Performing a predetermined function when the hot spot is selected.
- The hot spots reside on and are accessible from a digital video or audio file.
- The predetermined functions are selected from a mode control with a plurality of modes (shop, bid, interact, entertainment, link).
- A specific mode is selected by a user via an expandable graphical user interface bar.
- The specific mode toggles based on time stamps in the digital video or audio file.
- The hot spots are visualized by outlines, shading, or illumination.
- The apparatus is made to reside on and is executing on a computing system.
- Selecting and activating a function by clicking the hot spot.
III. The Accused Instrumentality
Product Identification
- The "Accused Instrumentality" is identified as "IBM Watson Media and its products and related functionality" (Compl. ¶12).
Functionality and Market Context
- The complaint alleges that IBM Watson Media provides a video streaming platform that allows content creators to create and program interactive elements within their videos (Compl. ¶12). These elements, which Plaintiff equates to "hot spots," include "Call-To-Action" (CTA) buttons, interactive polls, and chat functions (Compl. pp. 11, 13, 15). The complaint provides a screenshot of the IBM Watson Media dashboard, which it alleges is used to create and program these multifunctional hotspots (Compl. p. 8). The functionality is presented as a way for content owners to "monetize their live and on-demand video assets" (Compl. p. 7).
IV. Analysis of Infringement Allegations
’696 Patent Infringement Allegations
| Claim Element (from Independent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A Multifunctional Hot Spot method comprising: defining at least one hot spot by a communication with instructions stored on a tangible retaining medium; | The complaint alleges that IBM Watson Media allows users to define "hot spots" such as "buy now buttons, polls, chatting, watch now buttons, and learn more buttons" via communication with IBM's servers (Compl. ¶14). A screenshot shows a "Create new CTA" interface for programming these elements (Compl. p. 13). | ¶14 | col. 4:36-56 |
| wherein said predetermined functions are selected from a mode control; | The complaint alleges the IBM dashboard provides a "mode control" where users can select functions like "buy now, learn more, watch now, chat, polls etc." (Compl. ¶24). A screenshot of the "Interactivity" menu shows options for Chat, Q&A, and Polls, which are alleged to be modes (Compl. p. 11). | ¶24 | col. 15:51-52 |
| wherein the mode control comprises a plurality of modes; wherein the plurality of modes comprise a shop mode, a bid mode, an interact mode, an entertainment mode, and a link mode; | Plaintiff maps IBM's features to the claimed modes: "shop now (shop mode), watch now (entertainment mode), learn more (link mode), chat (interact mode), and polls/bidding (bid mode)" (Compl. ¶27). The complaint points to dashboard features like "Chat" for interact mode and "Polls" for bid mode (Compl. ¶25). | ¶27 | col. 15:53-57 |
| wherein a specific mode is selected by a user through an expandable graphical user interface bar; | The complaint alleges that modes are selected via an expandable graphical user interface bar, pointing to the menu options on the IBM Video Streaming Dashboard (Compl. ¶30). A screenshot shows the main dashboard navigation menu on the left side of the screen (Compl. p. 30). | ¶30 | col. 15:55-58 |
| wherein said specific mode further toggles based on time stamps in said digital video or digital audio file; | The complaint alleges that IBM's pre-roll and mid-roll functionality, which adds "hotspot functionality before the video plays... or at any time during the video," meets this limitation (Compl. ¶31). A screenshot depicts a mid-roll ad placement within a video timeline (Compl. p. 33). | ¶31 | col. 15:59-61 |
| wherein said hot spots are visualized by outlines, shading, or illumination or a combination of each...; | Plaintiff alleges the accused hotspots are visualized by "outlining, shading, or illumination" and provides screenshots of a "Take poll" notification and a "Call to action" button overlaid on a video, both of which are visually distinct from the underlying video content (Compl. ¶34, ¶35). | ¶35 | col. 15:62-65 |
| selecting and activating at least one of said predetermined functions by clicking on each particular Multifunctional Hot Spot. | The complaint alleges that viewers activate the predetermined functions by clicking on the hotspot, such as clicking a poll notification to see the answer choices (Compl. ¶37, ¶38). A screenshot shows a viewer must "click the notification" to take a poll (Compl. p. 16). | ¶37 | col. 16:64-67 |
Identified Points of Contention
- Scope Questions: The infringement theory depends on mapping modern interactive video features to the patent's specific terminology. This raises the question of whether an IBM "Call-To-Action" button is a "hot spot," or if an interactive "Poll" constitutes the claimed "bid mode." The defense may argue these are technically distinct concepts.
- Technical Questions: Claim 17 requires a mode that "toggles based on time stamps." The complaint points to pre-roll and mid-roll ad insertion. A central question for the court will be whether setting an ad to appear "mid-roll" is functionally equivalent to the claimed method of toggling a mode's availability based on specific, defined time stamps within the media file.
V. Key Claim Terms for Construction
The Term: "hot spot"
- Context and Importance: This is the foundational term of the asserted claim. The entire infringement case rests on whether the accused interactive features in IBM Watson Media (e.g., CTAs, polls, ad links) are properly construed as "hot spots" under the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests a broad scope, defining hot spots as including "hyperlinks and other known actions, in video files, audio files, digital files and/or designated areas of a website or webpage" (’696 Patent, col. 4:41-45).
- Evidence for a Narrower Interpretation: The abstract and detailed description repeatedly tie the "hot spots" to a system with a "function expandable menu bar" that controls their behavior, and specific embodiments show them as part of a comprehensive interactive system (’696 Patent, Abstract; col. 3:3-17). This could support a narrower construction tied to the patent's specific architecture.
The Term: "expandable graphical user interface bar"
- Context and Importance: Claim 17 requires that the mode is selected via this specific user interface element. The construction will determine whether the accused IBM dashboard, which is separate from the video player, meets this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is not explicitly defined, which may support a construction covering any expandable menu, such as the navigation sidebar in the accused IBM dashboard where a content creator selects interactive features (Compl. p. 30).
- Evidence for a Narrower Interpretation: Figure 3 of the patent depicts the "MODE CONTROL BUTTONS/BAR" (93) as an element located at the bottom of the "MOVIE/VIDEO [MEDIA] AREA" (90), suggesting it is an integral part of the video player interface itself, not a separate dashboard for content creation (’696 Patent, Fig. 3).
VI. Other Allegations
Indirect Infringement
- The complaint alleges induced infringement under 35 U.S.C. § 271(b). The factual basis for inducement is that IBM provides the Accused Instrumentality to its customers and provides "advertising on the benefits," "information regarding how to use," and "instruction on how to use" the allegedly infringing functionality (Compl. ¶¶16-17).
Willful Infringement
- The complaint alleges that Defendant had knowledge of the ’696 patent "at least as of the date this lawsuit was filed" (Compl. ¶15). The willfulness allegation appears to be based on post-suit conduct, as well as an allegation of being "willfully blind to the possibility that its inducing acts would cause infringement" (Compl. ¶17).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "hot spot" and the enumerated "modes" from a patent filed in 2000 be construed to cover the interactive "Call-To-Action" buttons, polls, and ad-tags of a modern, cloud-based video platform? The outcome will likely depend on whether the terms are given their broad functional meaning or are limited to the specific implementations described in the patent.
- A key evidentiary question will be one of technical operation: Does the accused system's ability to schedule pre-roll or mid-roll interactive elements perform the same function as the claimed method where a "specific mode further toggles based on time stamps"? The case may turn on whether these two methods are found to be technically equivalent.
- A final dispositive question may concern the system architecture: Does a system that separates the content creator's dashboard (where interactive modes are selected) from the end-user's video player meet the claim limitation of an "apparatus" where a user selects a mode via an "expandable graphical user interface bar," which the patent figures depict as integrated with the video player?