NL Giken Inc v. Amazon.com Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: NL Giken Inc. (Japan)
  • Defendant: Amazon.com, Inc.; Amazon.com Services LLC; Amazon Web Services, Inc.; and Twitch Interactive, Inc. (Delaware)
  • Plaintiff’s Counsel: Wolf, Greenfield & Sacks, P.C.
• Case Identification: 1:24-cv-00028, D. Del., 03/18/2024
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because all defendants are incorporated in Delaware. The complaint further alleges that Amazon transacts business and maintains a regular and established place of business in the district, including its largest U.S. fulfillment center and other offices.
• Core Dispute: Plaintiff alleges that Defendant’s streaming devices, software, and services, including Amazon Prime Video and Twitch, infringe five patents related to shared video watching, automatic playback of sequential content, mid-stream content downloading, and advertising-supported content delivery.
• Technical Context: The patents-in-suit relate to user experience, content management, and monetization models in the video streaming industry, a sector characterized by intense competition for viewer engagement.
• Key Procedural History: The complaint is an amended version of an original complaint. The filing date of the original complaint is cited as the date from which Defendants allegedly had knowledge of the asserted patents.

Case Timeline

Date	Event
2006-04-07	Priority Date for ’236 Patent and ’615 Patent
2006-07-09	Priority Date for ’391 Patent
2008-09-14	Priority Date for ’968 Patent and ’592 Patent
2012-01-10	’236 Patent Issued
2014-03-18	’391 Patent Issued
2016-04-19	’615 Patent Issued
2018-01-01	Alleged Infringement Start Date (approximate)
2018-04-17	’968 Patent Issued
2020-12-29	’592 Patent Issued
2024-03-18	Amended Complaint Filed

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

U.S. Patent No. 8,094,236 - "Television system, television set and remote controller"

• Patent Identification: 8,094,236, "Television system, television set and remote controller," issued January 10, 2012.

The Invention Explained

• Problem Addressed: The patent's background section describes the desire for family members living in separate homes to "keep a warm eye" on one another, noting that existing monitoring systems can be large-scale or require technical knowledge beyond merely watching television ('236 Patent, col. 1:11-34).
• The Patented Solution: The invention proposes a television system where two or more television sets are communicatively linked. When a user performs a basic television function on one set (e.g., power-on, channel change), the system is configured to automatically generate and send information about that event to the other television set, which can then display it ('236 Patent, Abstract; col. 2:1-10). The complaint includes a diagram from the patent illustrating two separate "Home" systems in communication (Compl. p. 5, Fig. 1). This creates a form of ambient social awareness through the television.
• Technical Importance: The patent describes an early architecture for a "social TV" or connected viewing experience, leveraging the television as a passive communication hub between households (Compl. ¶14).

Key Claims at a Glance

• The complaint asserts infringement of at least claim 1 (Compl. ¶33).
• Essential elements of independent claim 1 include:
  • A television set system comprising a television function unit.
  • A detector for detecting a change in the television function.
  • A communicator for communicating with an outside counterpart.
  • An input for preparing "first information" of free contents.
  • A "first designator" and "first trigger" for manually sending the first information.
  • An "automatic generator" for creating "second information" in response to the detector.
  • A "second designator" and "second trigger" for automatically sending the second information.

U.S. Patent No. 9,319,615 - "Television system, television set and remote controller"

• Patent Identification: 9,319,615, "Television system, television set and remote controller," issued April 19, 2016.

The Invention Explained

• Problem Addressed: As with the related ’236 Patent, this patent addresses the desire for remotely located individuals to share a television viewing experience (Compl. ¶14, 21).
• The Patented Solution: The invention describes a broadcast program viewing system where one television set can receive information identifying the "definite broadcast program" being watched on another television set. The system includes a "manual controller" that allows a user, via a "predetermined same manual operation," to change their display to match the program being viewed on the other set, enabling synchronized viewing (’615 Patent, Abstract; col. 1:11-20).
• Technical Importance: The technology provides a streamlined method for users in different locations to co-view the same broadcast content without requiring complex coordination ('615 Patent, col. 4:51-58).

Key Claims at a Glance

• The complaint asserts infringement of at least claim 1 (Compl. ¶45).
• Essential elements of independent claim 1 include:
  • A display arranged to display a broadcast program.
  • A receiver arranged to receive information of a "definite broadcast program" identified by a "channel selection of another television set."
  • A manual controller arranged to change the display in response to a "predetermined same manual operation from own motive of a viewer."
  • The manual operation has "no influence on the program selection of the another broadcast program viewing system" but has "influence solely on the replacement of the broadcast program of the own broadcast program viewing system."

U.S. Patent No. 9,948,968 - "Digital contents receiving apparatus"

• Patent Identification: 9,948,968, "Digital contents receiving apparatus," issued April 17, 2018.
• Technology Synopsis: The patent addresses the problem of user "confusion" caused by the "increase of options" in digital content streaming ('968 Patent, col. 1:54-57). The invention is a receiving apparatus with a processor and memory configured to "automatically designate a succeeding part" of a digital moving image content (e.g., the next episode of a series) for display after a user has finished a "viewed part" (Compl. ¶15; '968 Patent, Claim 1). The complaint includes a flowchart from the patent showing the logic for selecting and playing the next chapter or beginning of content (Compl. p. 6, Fig. 4). The complaint dedicates significant sections to arguing that this invention was a non-obvious and patent-eligible solution to a technical problem specific to the streaming era (Compl. ¶57-99).
• Asserted Claims: At least claim 1 (Compl. ¶101).
• Accused Features: The "Autoplay Next Episode" functionality within Amazon's Prime Video application, which automatically starts the next episode in a series after the current one concludes (Compl. ¶102, 106).

U.S. Patent No. 10,880,592 - "Digital contents receiving apparatus"

• Patent Identification: 10,880,592, "Digital contents receiving apparatus," issued December 29, 2020.
• Technology Synopsis: The patent describes an apparatus for receiving digital content where a user can begin viewing from a "midstream part" (e.g., joining a live broadcast partway through). The apparatus is further configured with a memory and I/O interface to receive and store the "entire data" of the same content, allowing a user who joined mid-stream to access the content from the beginning (e.g., by downloading it) (Compl. ¶16; ’592 Patent, Claim 1).
• Asserted Claims: At least claim 1 (Compl. ¶117).
• Accused Features: The Prime Video service, which allegedly allows a user who started watching a movie mid-stream via the Prime Video Live TV service to then download the entirety of that movie (Compl. ¶122).

U.S. Patent No. 8,677,391 - "Moving image data delivery system, an advertising image data delivery system, and a moving image viewing apparatus"

• Patent Identification: 8,677,391, "Moving image data delivery system, an advertising image data delivery system, and a moving image viewing apparatus," issued March 18, 2014.
• Technology Synopsis: The patent discloses a data delivery system for advertising-supported media. The system uses a "first controller" to provide image data and advertising data to a viewing apparatus without requiring payment at the time of delivery. A "second controller" is adapted to receive electronic payment in exchange for "a report of the electric data presentation," which can be read as a report of ads viewed ('391 Patent, Abstract, Claim 1). The complaint includes a diagram illustrating the flow of data, payments, and reports between station computers, user computers, ad providers, and advertisers (Compl. p. 8, Fig. 2).
• Asserted Claims: At least claim 1 (Compl. ¶130).
• Accused Features: The Twitch platform and Twitch Studio services, which enable streamers to broadcast content that includes advertising and receive revenue based on that advertising (Compl. ¶130, 132).

III. The Accused Instrumentality

Product Identification

The complaint accuses a wide range of Amazon products and services, but focuses on specific functionalities for each patent family (Compl. ¶27-28). For the ’236 and ’615 patents, the primary accused instrumentality is the "Watch Party" feature within the Prime Video application, particularly when used on Amazon devices such as Fire tablets, Fire TV, and Fire Stick (Compl. ¶34, 46).

Functionality and Market Context

The Prime Video Watch Party feature enables multiple users in different physical locations to view content from the Prime Video library in a synchronized session. The feature includes a chat sidebar for real-time communication among participants (Compl. ¶38). This functionality is designed to create a shared, social viewing experience for on-demand content, a feature intended to increase user engagement and platform loyalty in the competitive streaming market.

IV. Analysis of Infringement Allegations

The complaint incorporates by reference Exhibits F and G, which allegedly contain claim charts for the ’236 and ’615 patents, respectively. As these exhibits were not provided, a summary of the narrative infringement theory is presented below.

’236 Patent Infringement Allegations

The complaint alleges that Amazon devices preinstalled with the Prime Video app and Watch Party feature meet all limitations of claim 1 (Compl. ¶34). The apparent theory is that a user's device acts as the "television set system." When a user initiates a Watch Party, this is alleged to be a "change in the television function." The system then "automatically" generates and sends "second information" (the Watch Party session data) via a "communicator" (network interface) to a "predetermined address" (the other participants' user accounts).

’615 Patent Infringement Allegations

The complaint alleges that the same accused products meet all limitations of claim 1 of the ’615 Patent (Compl. ¶46). The infringement theory appears to focus on the user who joins a Watch Party. That user's system "receives... information of one definite broadcast program" (the movie being streamed) identified by the host's "channel selection" (the host's choice of content). The act of clicking to join the party is alleged to be the "predetermined same manual operation" that changes the user's display to match the host's.

Identified Points of Contention

• Scope Questions: A primary issue for both the ’236 and ’615 patents may be whether terms rooted in the context of 2006-era broadcast television can be construed to cover modern, application-level streaming features. For instance, does a "change in the television function," described in the ’236 Patent specification with examples like "power-on" and "channel selection" ('236 Patent, col. 2:15-17), read on the software function of initiating a "Watch Party"? Similarly, for the ’615 Patent, does an on-demand movie on Prime Video qualify as a "broadcast program," and does selecting that movie constitute a "channel selection"?
• Technical Questions: For the ’236 Patent, what evidence does the complaint provide that the accused products practice the claimed elements of a "first trigger" for manually sending information in addition to the "second trigger" for automatically sending information, as both are required by claim 1? The complaint's narrative focuses on the automatic aspect of Watch Party invitations (Compl. ¶34-38).

V. Key Claim Terms for Construction

For the ’236 Patent

• The Term: "television function"
• Context and Importance: The applicability of claim 1 to the Watch Party feature hinges on whether initiating a synchronized streaming session is considered a "change in the television function." Practitioners may focus on this term because its construction could determine whether the claim is limited to the traditional hardware operations of a television or can extend to modern software application features.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The term is not explicitly defined in the patent, which could support an argument that it should be given its plain and ordinary meaning, potentially encompassing any primary function of a device used for viewing television-style content.
  • Evidence for a Narrower Interpretation: The specification provides specific examples of a "change in the television function" as "at least one of the power-on or power-off, the channel selection and sound volume" ('236 Patent, col. 2:15-17). This language may be used to argue that the term is limited to these basic operational states of a traditional television set.

For the ’615 Patent

• The Term: "broadcast program"
• Context and Importance: Infringement of claim 1 requires the accused system to receive information about a "broadcast program." The central dispute will be whether this term, traditionally associated with linear, over-the-air transmissions, can encompass on-demand video content streamed from a server.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not contain an explicit definition that limits "broadcast program" to over-the-air signals. An argument could be made that in modern parlance, any program widely distributed ("broadcast") to an audience, including via the internet, falls within the term's scope.
  • Evidence for a Narrower Interpretation: The claim links the "broadcast program" to a "channel selection," and the specification discusses displaying it via a "television function unit" ('615 Patent, Claim 1; col. 3:49-51). This context strongly suggests the conventional meaning of a program received via a broadcast or cable network, as opposed to a file requested from a server in an on-demand system.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement across all asserted patents, based on Defendants providing user manuals, websites, and advertising materials that allegedly instruct and encourage users to use the accused features (e.g., Watch Party, Autoplay, Twitch advertising) (Compl. ¶38, 50, 106, 122, 132). It also alleges contributory infringement for the '968 and '391 patents, asserting that the Prime Video app with Autoplay and the Twitch platform are not staple articles of commerce and are material parts of the respective inventions (Compl. ¶109-111, 133-135).

Willful Infringement

The complaint does not contain an explicit count for willful infringement. However, it alleges that Defendants have had knowledge of each asserted patent since at least the filing of the original complaint, which could form the basis for alleging post-suit willful infringement (Compl. ¶35, 47, 103, 119, 129).

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

• A core issue will be one of definitional scope: can patent terms rooted in the technological context of 2006-2008 broadcast television, such as "television function," "broadcast program," and "channel selection," be construed to encompass the on-demand, application-level software features of modern streaming services like Amazon Prime Video?
• A key question for the ’968 patent will be one of patent eligibility and functionality: given the complaint's extensive pre-emptive defense of the patent's validity under 35 U.S.C. § 101, a central battle will be whether the claims are directed to a patent-eligible technological improvement or an abstract idea. The infringement analysis will then turn on whether Amazon’s "Autoplay Next Episode" feature operates in the specific manner required by the patent’s interconnected processor, memory, and software controller limitations.
• For the ’391 patent, the case will likely involve a question of system architecture mapping: does the distributed Twitch ecosystem—involving streamers, advertisers, viewers, and Twitch's platform—satisfy the claimed "first controller" and "second controller" structure for delivering content and processing payments in exchange for advertising reports?