DCT

1:23-cv-00220

AlmondNet Inc v. FreeWheel Media Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00220, D. Del., 03/01/2023
  • Venue Allegations: Venue is based on Defendants being incorporated under the laws of the state of Delaware.
  • Core Dispute: Plaintiff alleges that Defendant’s advertising platform infringes four patents related to network-based targeted advertising systems and methods.
  • Technical Context: The technology at issue involves methods for targeting advertisements by linking a user's online behavior on one device (e.g., a computer) to advertisements delivered on another (e.g., a television), and for creating a data marketplace for user profile attributes.
  • Key Procedural History: The complaint alleges that Defendant FreeWheel Media, Inc. acquired Defendant Beeswax.io Corp. in 2021. Plaintiff also alleges it put Defendants on notice of the asserted patents and infringement through communications with FreeWheel in 2018 and with Beeswax in 2019, prior to the filing of the lawsuit.

Case Timeline

Date Event
1999-12-13 Priority Date for ’249 and ’307 Patents
2007-04-17 Priority Date for ’260 and ’015 Patents
2010-12-28 U.S. Patent No. 7,861,260 Issues
2011-07-12 U.S. Patent No. 7,979,307 Issues
2014-07-08 U.S. Patent No. 8,775,249 Issues
2018-01-01 Discussions between Plaintiff and FreeWheel Media, Inc. allegedly providing notice of patent portfolio (approx.)
2019-07-24 Plaintiff sends communication to Beeswax.io Corp. alleging infringement
2019-10-25 Plaintiff sends second communication to Beeswax.io Corp. alleging infringement
2021-01-01 FreeWheel Media, Inc. acquires Beeswax.io Corp. (approx.)
2023-01-24 U.S. Patent No. 11,564,015 Issues
2023-03-01 Complaint Filed

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

U.S. Patent No. 8,775,249 - “method, computer system, and stored program for accumulating descriptive profile data along with source information for use in targeting third-party advertisements”

  • Patent Identification: U.S. Patent No. 8,775,249, titled “method, computer system, and stored program for accumulating descriptive profile data along with source information for use in targeting third-party advertisements,” issued on July 8, 2014 (Compl. ¶14).

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of creating a viable economic market for individual pieces of user information, or "attributes," rather than trading in whole databases, which is necessary for highly granular, client-specific advertisement targeting (’307 Patent, col. 1:29-45, col. 2:1-4).
  • The Patented Solution: The invention proposes a central computer system, or databank, that acts as a brokerage for user profile attributes. Third-party websites ("profile providers") contribute partial profiles of their visitors to the system, which then stores the data and maintains a record of the data's source. This allows for compensation to be managed when an advertiser later uses a specific attribute from a specific provider to target an advertisement (’249 Patent, Abstract; ’307 Patent, col. 3:1-14).
  • Technical Importance: The described system creates a technical and economic framework for monetizing discrete user data points from multiple sources, enabling more precise ad targeting based on a composite user profile assembled from various unaffiliated entities (’307 Patent, col. 2:5-9).

Key Claims at a Glance

The complaint does not specify which claims are asserted, but incorporates by reference a claim chart for an independent claim (Compl. ¶20). Independent claim 1 includes the following essential elements:

  • Electronically receiving at a programmed computer system, from a server controlled by an unaffiliated third party, a partial profile of an entity.
  • Automatically adding the received partial profile to a maintained profile believed to be related to the same entity.
  • Wherein receiving the partial profile is achieved by an automatic electronic URL redirection from a portion of the third party's website.
  • Automatically generating and storing an electronic record of which third party contributed to the maintained profile.
  • Wherein the maintained profile comprises data used in targeting third-party advertisements.

U.S. Patent No. 7,861,260 - “targeted television advertisements based on online behavior”

  • Patent Identification: U.S. Patent No. 7,861,260, titled “targeted television advertisements based on online behavior,” issued on December 28, 2010 (Compl. ¶24).

The Invention Explained

  • Problem Addressed: The patent identifies a significant challenge in cross-media advertising: how to target television advertisements based on a user's online web-browsing behavior without resorting to the use of Personally Identifiable Information (PII) to link the user's computer and television, a practice which raises substantial privacy concerns (’260 Patent, col. 7:27-38).
  • The Patented Solution: The invention discloses a method of electronically associating the IP address of a user's online access device (e.g., a cable modem) with the IP address of their television set-top box. A central ad server uses this non-PII association to direct a television advertisement, selected based on the user's online activity, to the correct set-top box (’260 Patent, Abstract). The detailed description illustrates this system where a common provider (ISP/TVP) has visibility into both IP addresses and reports the association to a Central Ad Server (CAS) (’260 Patent, col. 9:8-30; Fig. 1).
  • Technical Importance: This technology proposes a privacy-centric solution for cross-device ad targeting by using network-level identifiers (IP addresses) as the bridge between online activity and television viewing, thereby avoiding the need to correlate PII across different platforms (’260 Patent, col. 8:6-14).

Key Claims at a Glance

The complaint does not specify which claims are asserted, but incorporates by reference a claim chart for an independent claim (Compl. ¶30). Independent claim 1 includes the following essential elements:

  • For each of a multitude of users, electronically associating an online access IP address and a set-top box IP address.
  • Using user profile information derived from online activity from a first online user interface device via a first one of the online access IP addresses.
  • Automatically causing a first television advertisement to be directed to a set-top box for presentation.
  • Wherein the set-top box is indicated by the set-top box IP address associated with the first online access IP address.

Multi-Patent Capsule: U.S. Patent No. 7,979,307

  • Patent Identification: U.S. Patent No. 7,979,307, titled “method and stored program for accumulating descriptive profile data along with source information for use in targeting third-party advertisements,” issued July 12, 2011 (Compl. ¶35).
  • Technology Synopsis: This patent, related to the ’249 Patent, describes a mercantile method for user profile data. It discloses a system where a user (e.g., a website) can interact with a central databank to either contribute new attributes about a visitor in exchange for value, or purchase additional attributes from the databank to enrich their own visitor profile, thereby creating a brokerage for discrete pieces of user information (’307 Patent, Abstract).
  • Asserted Claims: The complaint asserts at least one independent claim (Compl. ¶41).
  • Accused Features: The complaint accuses FreeWheel’s advertising platform of practicing the patented method (Compl. ¶36).

Multi-Patent Capsule: U.S. Patent No. 11,564,015

  • Patent Identification: U.S. Patent No. 11,564,015, titled “targeted television advertisements based on online behavior,” issued January 24, 2023 (Compl. ¶45).
  • Technology Synopsis: This patent, related to the ’260 Patent, discloses a computer system for using a common IP address to associate multiple electronic devices (e.g., a mobile device and a set-top box). The system creates a database of these associations using stored internet access data and timestamps to enable cross-device actions, such as targeting a TV ad, without using personally identifiable information (’015 Patent, Abstract).
  • Asserted Claims: The complaint asserts at least one independent claim (Compl. ¶51).
  • Accused Features: The complaint accuses FreeWheel’s advertising platform of infringing the patent (Compl. ¶46).

III. The Accused Instrumentality

Product Identification

  • The Accused Instrumentalities are identified as "FreeWheel's advertising platform" and related products and services made, used, or sold by the Defendants (Compl. ¶15).

Functionality and Market Context

  • The complaint alleges that the Accused Instrumentalities are part of an "industry-leading targeted advertising solutions" ecosystem (Compl. ¶2). The complaint does not provide sufficient detail for analysis of the specific technical operation of the Accused Instrumentalities, instead making general allegations that the platform performs the functions recited in the patents-in-suit. The acquisition of Beeswax.io Corp. by FreeWheel Media, Inc. in 2021 is noted as a relevant market event (Compl. ¶11).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references, but does not include, claim chart exhibits that compare asserted claims to the Accused Instrumentalities (Compl. ¶¶20, 30, 41, 51). The narrative infringement theories are summarized below.

'249 Patent Infringement Allegations

  • The complaint alleges that FreeWheel's advertising platform satisfies all limitations of the asserted claims by performing a method of accumulating descriptive profile data from third-party sources for use in ad targeting (Compl. ¶¶15, 20). This suggests the platform receives user data attributes from unaffiliated partner websites and aggregates this data to create profiles for serving advertisements.

'260 Patent Infringement Allegations

  • The complaint alleges that FreeWheel's advertising platform infringes by using online behavior to target television advertisements (Compl. ¶¶25, 30). The theory suggests that the platform necessarily performs the patented method of associating a user's online device with their television-connected device to enable the delivery of behaviorally targeted ads to the television.

Identified Points of Contention

  • Scope Questions: For the '260 and '015 Patents, a central issue may be whether the term "set-top box IP address" can be construed to cover modern smart TVs or streaming devices that may not use a traditional set-top box. For the '249 and '307 Patents, a question is whether modern data-sharing via server-to-server API calls falls within the scope of claim limitations requiring "URL redirection."
  • Technical Questions: A key technical question for the '260 patent family is what evidence the complaint provides that the accused platform performs the specific function of "electronically associating an online access IP address ... and a set-top box IP address." For the '249 patent family, a question is what evidence shows the accused platform generates and stores a specific "record of which of the plurality of unaffiliated third parties contributed" a particular profile attribute, as required by the claim.

V. Key Claim Terms for Construction

The Term: "electronically associating an online access IP address ... and a set-top box IP address" (from ’260 Patent, Claim 1)

  • Context and Importance: This phrase describes the core technical mechanism for linking a user's online and television viewing environments without PII. The viability of the infringement case for the '260 and '015 patents will depend heavily on whether the accused platform's cross-device linking technology can be shown to perform this specific type of "association." Practitioners may focus on this term because Defendant could argue its technology uses different methods, such as login data or probabilistic device graphing, that do not rely on associating two specific IP addresses.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the association as a record stored on a Central Ad Server (CAS) that is used to direct an advertisement, suggesting any form of electronic record linking the two IP addresses for that purpose could be covered (’260 Patent, col. 10:4-21).
    • Evidence for a Narrower Interpretation: The embodiments frequently describe the association being made by a common service provider that delivers both Internet and television service (an "ISP/TVP"), which gives it unique visibility into both IP addresses (’260 Patent, Fig. 1; col. 9:35-42). This could support a narrower construction limited to scenarios where a single entity creates the linkage.

The Term: "automatic electronic URL redirection" (from ’249 Patent, Claim 1)

  • Context and Importance: This term defines a specific mechanism by which the central system is alleged to receive profile data from third parties. The infringement analysis for the '249 patent may turn on whether the data-gathering methods used by the accused platform meet this definition.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent uses the term without providing a special definition, which may support giving it a broad, plain, and ordinary meaning consistent with any technical process that causes a user's browser to be directed from a third-party site to the data-collection server to transmit profile data.
    • Evidence for a Narrower Interpretation: The patent was filed in an era where full page or frame redirection was a common method of passing data. A defendant may argue that modern techniques such as server-to-server API calls or the firing of tracking pixels, which share data without redirecting the user's browser, fall outside the ordinary meaning of "URL redirection" as understood at the time of the invention.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges induced infringement for all four patents, stating that Defendant provides "user manuals and online instruction materials" that instruct and encourage its customers to use the accused platform in ways that directly infringe (Compl. ¶¶18, 28, 39, 49). Contributory infringement is also alleged (Compl. ¶¶19, 29, 40, 50).

Willful Infringement

  • The complaint alleges willful infringement for all four patents based on alleged pre-suit knowledge. This knowledge is purportedly based on communications with Beeswax.io Corp. beginning on July 24, 2019, and discussions with FreeWheel Media, Inc. in 2018 (Compl. ¶¶17, 27, 38, 48).

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

  • A core issue will be one of technical proof and mechanism: What evidence will Plaintiff present to demonstrate that the Accused Instrumentalities operate using the specific technical means recited in the claims, such as the direct association of online and set-top box IP addresses ('260 and '015 patents) and the use of URL redirection to collect data ('249 patent)? The complaint's general allegations raise the question of whether there is a fundamental mismatch between the claimed methods and the actual operation of a modern advertising platform.
  • A key legal question will be one of definitional scope and evolution: Can claim terms like "set-top box IP address," which are rooted in the technology of the early 2000s, be construed broadly enough to encompass the diverse hardware (e.g., smart TVs, streaming sticks) and software-based data sharing protocols (e.g., server-to-server APIs) that characterize the contemporary digital advertising landscape?