DCT

1:24-cv-01259

AlmondNet Inc v. FreeWheel Media Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-01259, D. Del., 03/14/2025
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because both Defendants are incorporated in the State of Delaware.
  • Core Dispute: Plaintiffs allege that Defendants’ digital advertising platform infringes four patents related to systems and methods for targeting online advertisements and measuring ad effectiveness based on a user’s television viewing activity.
  • Technical Context: The technology addresses the challenge of linking a user's activity across different devices—such as a television set-top box and an online computer or mobile device—to enable more relevant advertising and performance analytics in the digital advertising market.
  • Key Procedural History: The complaint alleges that Plaintiffs provided Defendant Beeswax.io Corp. with notice of infringement of U.S. Patent Nos. 8,595,069 and 10,321,198 via letters sent in July and October 2019. It also alleges that Defendant AlmondNet Inc v. FreeWheel Media Inc was put on notice of the patent portfolio through business discussions in 2018. FreeWheel subsequently acquired Beeswax in 2021. This history forms the basis for Plaintiffs' allegations of pre-suit willful infringement for three of the four asserted patents.

Case Timeline

Date Event
2007-12-31 Priority Date for ’164, ’069, and ’198 Patents
2011-08-03 Priority Date for ’962 Patent
2013-10-22 U.S. Patent No. 8,566,164 Issues
2013-11-26 U.S. Patent No. 8,595,069 Issues
2018-04-24 Discussions initiated between Intent IQ and FreeWheel
2019-06-11 U.S. Patent No. 10,321,198 Issues
2019-07-24 Plaintiffs send first notice letter to Beeswax.io Corp.
2019-10-25 Plaintiffs send second communication to Beeswax.io Corp.
2021-01-01 FreeWheel Media, Inc. acquires Beeswax.io Corp. (approx. date)
2024-04-02 U.S. Patent No. 11,949,962 Issues
2024-11-15 Original Complaint Filed
2025-03-14 First Amended Complaint Filed

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

U.S. Patent No. 11,949,962 - "method and computer system using proxy IP addresses and PII in measuring ad effectiveness across devices"

The Invention Explained

  • Problem Addressed: The patent addresses the technical challenge of correlating a user's activities across different device ecosystems, such as television viewing and online browsing, particularly when devices use dynamic IP addresses that change over time, making it difficult to link them to a single user or household for advertising purposes (’198 Patent, col. 9:1-12).
  • The Patented Solution: The invention claims a method where a "profile provider" system first explicitly links a primary online device (OD1) to a television set-top box (STB) by matching Personally Identifiable Information (PII) associated with each. The system then uses the location of OD1 to establish a "proxy location" for the STB. Subsequently, when other secondary online devices (OD2s) are observed near this proxy location (e.g., by sharing a common IP address), they are also associated with the STB. This allows the system to measure the effectiveness of a TV ad shown on the STB by tracking subsequent user behavior on an associated OD2 (’962 Patent, Abstract).
  • Technical Importance: This approach creates a persistent, cross-device user profile that enables ad-effectiveness measurement even when the television STB is not connected to a computer network and the online devices have changing IP addresses (’198 Patent, col. 10:9-14).

Key Claims at a Glance

  • The complaint asserts at least independent method claim 1 (Compl. ¶20).
  • Essential elements of claim 1 include:
    • Automatically storing an association between a first online device (OD1) and a set-top box (STB) by matching first PII about a user of the OD1 with second PII about a user of the STB.
    • Automatically measuring the effectiveness of an advertisement displayed on the STB by tracking user behavior on a second online device (OD2).
    • Basing the measurement on an association between the OD2 and the STB, which itself relies on the stored OD1-STB association and a separate OD1-OD2 association.
    • The OD1-OD2 association is based on their use of a "common proxy IP address."

U.S. Patent No. 8,566,164 - "targeted online advertisements based on viewing or interacting with television advertisements"

The Invention Explained

  • Problem Addressed: The patent seeks to solve the problem of making online advertising more relevant by leveraging a user's television viewing habits, which is difficult when the television and online devices are not explicitly linked and may have different, dynamically assigned network identifiers (’198 Patent, col. 9:1-12).
  • The Patented Solution: The invention describes a method where an online advertisement is directed to a user's online device. The selection of the ad is based on information in a user profile that contains a set-top box (STB) identifier. This profile information is generated from data collected about the user's behavior with respect to a television advertisement delivered to that specific STB. Crucially, the system associates the online device with the STB without using PII, based on recognizing that both devices are connected to a "common local area network" (’164 Patent, Claim 1).
  • Technical Importance: This patented method provides a privacy-conscious way to bridge the gap between television and online advertising ecosystems, enabling cross-media targeting without relying on personal user data to link the devices (’164 Patent, Claim 1).

Key Claims at a Glance

  • The complaint asserts at least independent method claim 1 (Compl. ¶30).
  • Essential elements of claim 1 include:
    • Automatically causing a selected online advertisement to be directed to a first online user interface device.
    • Selecting the advertisement based on information from a user profile that references or includes a first set-top box identifier.
    • The information in the user profile is derived from data related to user behavior with respect to a television advertisement delivered to that set-top box.
    • Associating the online device's identifier with the set-top box's identifier "without using personally identifiable information," based on recognizing that the devices are connected to a "common local area network."

U.S. Patent No. 8,595,069 - "systems and methods for dealing with online activity based on delivery of a television advertisement"

  • Technology Synopsis: This patent describes a method for taking action in the online world based on television ad viewing. A computer system receives a "notification" from a set-top box (STB) signifying that a TV ad has been presented. This notification triggers the system to perform a "first action," such as delivering a targeted online ad or attributing a user's online action to the TV ad, with respect to an online device associated with that STB (Compl. ¶¶11, 39). The association is made without using PII and is based on a "common LAN, using probabilistic device maps" (Compl. ¶12).
  • Asserted Claims: At least independent method claim 1 (Compl. ¶40).
  • Accused Features: Defendants' Demand Side Platform ("DSP") service, which allegedly receives "tracking events" from STBs and uses this data to deliver targeted ads to associated online devices or attribute user actions to the TV ad (Compl. ¶39).

U.S. Patent No. 10,321,198 - "systems and methods for dealing with online activity based on delivery of a television advertisement"

  • Technology Synopsis: Similar to the ’069 Patent, this patent details a method where a computer system receives a notification from an STB after a TV ad is shown and, in response, takes a "first action" on an associated online device. The complaint alleges that a key distinction in this patent is that the association between the STB and the online device is not required to be based on a "common LAN," but the "no-PII" limitation remains, suggesting a broader probabilistic matching method (Compl. ¶15).
  • Asserted Claims: At least independent method claim 1 (Compl. ¶50).
  • Accused Features: Defendants' DSP service, for the same reasons alleged for the ’069 patent (Compl. ¶49).

III. The Accused Instrumentality

No probative visual evidence provided in complaint.

  • Product Identification: The accused instrumentalities are Defendants' advertising platform products and services, including the demand side platform ("DSP") service acquired from Beeswax.io Corp., which is sometimes marketed as the "BaaS Platform" (Compl. ¶¶11, 17, 27, 37, 47).
  • Functionality and Market Context: The complaint alleges that Defendants' DSP receives "tracking event" notifications from Over-the-Top ("OTT") devices like smart TVs or streaming devices (e.g., Roku, AppleTV) when a television advertisement is presented (Compl. ¶¶11-12). These notifications allegedly include an "STB identifier" such as Roku's "RIDA" or an IP address (Compl. ¶¶11-12). Based on this event, the DSP performs an action, such as causing a targeted ad to be delivered to an online device associated with the STB or attributing a user's action on that online device to the television ad (Compl. ¶¶11-12). The association between the television device and the online device is allegedly accomplished using a "probabilistic device map" without the use of personally identifiable information (PII) (Compl. ¶11).

IV. Analysis of Infringement Allegations

The complaint incorporates claim chart exhibits by reference that were not included in the provided filing; the following summary is based on the narrative allegations in the complaint body.

’962 Patent Infringement Allegations
The complaint does not provide sufficient detail for analysis of the infringement of U.S. Patent No. 11,949,962, stating only that the Accused Instrumentalities perform all claim limitations and incorporating an external exhibit by reference (Compl. ¶20).

’164 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
(a) with the computer system automatically causing, in response to online activity from a first online user interface device, a first selected online advertisement to be directed to the first online user interface device... Defendants' DSP causes targeted ads to be delivered to an online device (Compl. ¶11). ¶11 col. 25:51-57
(b) wherein the first selected online advertisement is selected based on information from a first user profile, which first user profile references or includes a first set-top box identifier... The ad selection is based on data aggregated from user activity, which is linked to an STB identifier (e.g., Roku's "RIDA" or AppleTV's "advertisingIdentifier") (Compl. ¶¶4, 11). ¶¶4, 11 col. 25:58-61
(c) wherein the information in part (b) is derived at least in part from automatically collected first data related to user behavior with respect to at least one television advertisement delivered to a set-top box... The profile information is derived from a "tracking event" that signifies the presentation of a TV ad via an STB (Compl. ¶11). ¶11 col. 25:62-66
(d) wherein the first set-top box identifier and the first online access identifier are associated without using personally identifiable information..., based on automatically recognizing that the [devices] are connected... to a common local area network. The association of the STB and the online device is allegedly done "without use of PII and based on common LAN, using probabilistic device maps" (Compl. ¶12). ¶12 col. 26:1-8
  • Identified Points of Contention:
    • Scope Questions: A central question for the ’164 Patent will be whether a "probabilistic device map" that associates devices sharing a public IP address satisfies the claim limitation requiring the devices to be "connected... to a common local area network." The defense may argue that merely sharing a public IP address does not prove the devices are on a common LAN as contemplated by the patent.
    • Technical Questions: The analysis will likely focus on the specific mechanism of association. What evidence does the complaint provide that Defendants' probabilistic matching method is, in fact, "based on" a common LAN, as opposed to other factors like co-location inferred from GPS or other signals? Furthermore, for the ’962 patent, a primary evidentiary question will be whether Plaintiffs can demonstrate that Defendants' system performs the explicit "matching" of PII from two different sources as required by claim 1.

V. Key Claim Terms for Construction

  • The Term: "connected... to a common local area network" (’164 Patent, Claim 1)

  • Context and Importance: This term is critical because it defines the specific technical basis for associating a television device and an online device without using PII. The infringement case for the ’164 and ’069 patents may depend on whether Defendants' use of "probabilistic device maps" meets this structural network requirement. Practitioners may focus on this term because the complaint alleges this feature is met through probabilistic methods based on a "common LAN," a characterization the defense will likely scrutinize.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification may describe that devices sharing a single external IP address provided by a router are on a common LAN, which could support an argument that inferring a shared IP is sufficient (’198 Patent, col. 20:56-62).
    • Evidence for a Narrower Interpretation: The patent figures depict a direct or router-mediated connection within a home or office setting (e.g., modem 32 and STB 36 sharing connection 35 in ’198 Patent, FIG. 2). The defense could argue the term requires proof of this type of shared local infrastructure, not just a probabilistic guess based on a shared public IP address.

  • The Term: "matching... personally identifiable information (PII)" (’962 Patent, Claim 1)

  • Context and Importance: This is the foundational step of claim 1 of the ’962 Patent, defining how the initial, explicit link between a primary online device and a set-top box is created. Infringement hinges on whether Plaintiffs can prove that Defendants perform this specific data-matching step.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification's definition of PII may be broad, including items like an email address or username, which might be matched across different service logins (’198 Patent, col. 7:61-67). Plaintiffs might argue that any matching of user-specific identifiers meets this limitation.
    • Evidence for a Narrower Interpretation: The specification may provide examples of matching highly specific data like a name and street address. Defendants may argue that the term requires a direct comparison of such formal identity data, not merely associating accounts that share a common login credential.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants direct and control their users and customers to perform the infringing acts, condition benefits on such infringing use, and establish the timing and manner of the infringement, which are typical allegations for induced infringement (Compl. ¶¶18, 28, 38, 48).
  • Willful Infringement: Willfulness is alleged for all four patents. For the ’164, ’069, and ’198 patents, the allegation is based on pre-suit knowledge from business discussions in 2018 and explicit notice letters sent in 2019 (Compl. ¶¶29, 39, 49). For the more recently issued ’962 patent, the willfulness allegation is based on post-suit knowledge dating from the filing of the original complaint on November 15, 2024 (Compl. ¶19).

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

  • A core issue will be one of definitional scope: Can the claim term "connected... to a common local area network," which suggests a specific network architecture, be construed to cover an association made by a "probabilistic device map" that may only infer co-location based on a shared public IP address?
  • A second central conflict will be over the role of data in device association: The asserted claims present conflicting requirements. For the ’962 patent, the key evidentiary question will be whether Plaintiffs can prove Defendants perform the explicit "matching of PII" the claim requires. For the other patents, the question will be the opposite: can Plaintiffs prove that Defendants' association method functions "without using PII," as those claims demand?
  • A third key question will be one of functional operation: Does the "tracking event" allegedly received by Defendants' advertising platform perform the specific function of the claimed "notification," which must result from and signify the presentation of a television advertisement, or is there a material difference in the data and purpose of the accused signal?