DCT

9:17-cv-80392

Nissim Corp v. Wal Mart Stores Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 9:17-cv-80392, S.D. Fla., 03/27/2017
  • Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Florida because a substantial part of the events occurred there, Plaintiff suffered injury in the district, and Defendant committed acts of patent infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s sale of DVD and Blu-ray players that comply with industry-standard DVD Specifications infringes six patents related to seamless video playback and user operation controls.
  • Technical Context: The technology concerns methods for storing and playing video from optical discs to enable features like presenting different versions of a movie from a single disc or prohibiting functions like fast-forward during copyright warnings.
  • Key Procedural History: The complaint asserts that the patented technologies are essential to the DVD Specifications and have been licensed by every member of the DVD Consortium and numerous other major electronics companies. It also alleges Plaintiff provided Defendant with pre-suit notice of infringement on "various occasions" and offered a license agreement, which Defendant did not execute. All asserted patents expired by the end of 2013, limiting this action to a claim for past damages.

Case Timeline

Date Event
1992-02-07 Priority Date for ’805 and ’207 Patents
1993-01-11 Priority Date for ’678, ’945, ’013, and ’444 Patents
1995-07-18 U.S. Patent 5,434,678 Issues
1996-12-31 U.S. Patent 5,589,945 Issues
1997-12-01 DVD Specifications for Read Only Disc Part 3 Published
1999-06-15 U.S. Patent 5,913,013 Issues
2000-11-21 U.S. Patent 6,151,444 Issues
2001-03-27 U.S. Patent 6,208,805 Issues
2002-10-08 U.S. Patent 6,463,207 Issues
2013-12-31 Last Remaining Asserted Patent Expires
2017-03-27 Complaint Filed

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

U.S. Patent 5,434,678 - "Seamless Transmission Of Non-Sequential Video Segments," issued July 18, 1995

The Invention Explained

  • Problem Addressed: The patent’s background section describes the limitations of conventional film production, which results in a single, linear sequence of frames. This forces producers to make creative compromises to appeal to a broad audience and subjects viewers to content they may find objectionable (e.g., violence, nudity) (’678 Patent, col. 2:5-29). Prior art systems that simply cut out undesirable content create disruptive gaps or "dead segments" in the playback (’678 Patent, col. 2:49-54).
  • The Patented Solution: The invention discloses a video system that automatically assembles a customized video program from a single source containing non-sequentially stored segments. Based on a viewer's pre-established preferences (e.g., for a "PG" version instead of an "R" version), the system uses a "program segment map" to select and retrieve appropriate video segments—including parallel, transitional, or overlapping ones—and transmit them as a "seamless, continuous, and harmonious" program without gaps (’678 Patent, Abstract; col. 6:28-55).
  • Technical Importance: This technology provided a framework for storing multiple versions of a single film on one disc and tailoring the playback experience to individual viewer preferences without the jarring interruptions of simple censorship. (’678 Patent, col. 5:46-6:1).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2-3, 7-8, 10-15, and 18 (Compl. Count I, ¶3).
  • Independent Claim 1 requires:
    • A "preferencing means" for establishing video content preferences for categories like violence.
    • A "memory means" for storing a video and a "video segment map" defining the video segments.
    • A "processing means" for automatically selecting segments based on applying the preferences to the map.
    • A "random accessing means" for retrieving the selected segments.
    • A "transmitting means" for transmitting the retrieved segments as a continuous video.

U.S. Patent 5,589,945 - "Computer-Themed Playing System," issued December 31, 1996

The Invention Explained

  • Problem Addressed: The patent, a division of the application leading to the ’678 Patent, addresses the same problem of creating seamless, customized video playback from a single source containing non-linear segments (’945 Patent, col. 1:10-19).
  • The Patented Solution: This invention focuses on the system and method for achieving seamless playback by actively managing the data retrieval process. It describes using "buffering means" in coordination with "retrieving means" to "seamlessly skip a retrieval of a non-selected video segment," thereby producing a new version of the video that differs in length from the original content stream without playback interruptions (’945 Patent, Abstract; claim 8).
  • Technical Importance: The invention provides a technical solution to overcome the physical "average access time" limitations of disc players, which would otherwise cause noticeable gaps when the read head jumps between physically non-adjacent (i.e., non-sequential) data segments on a disc (’945 Patent, col. 3:1-5).

Key Claims at a Glance

  • The complaint asserts claims 5-12 (Compl. Count II, ¶8). Independent claims 5 (method) and 8 (system) are asserted.
  • Independent Claim 8 requires:
    • A "memory means" storing a video and a segment map.
    • "selecting means" for selecting segments from the map.
    • "retrieving means" for retrieving the selected segments.
    • "buffering means" for buffering a portion of a video segment.
    • "coordinating means" to coordinate the retrieving and buffering means to "seamlessly skip" a non-selected segment and produce a version of the video with a different length.

U.S. Patent 5,913,013 - "Seamless Transmission Of Non-Sequential Video Segments," issued June 15, 1999

  • Patent Identification: 5913013, "Seamless Transmission Of Non-Sequential Video Segments," issued June 15, 1999 (Compl. Count III, ¶12).
  • Technology Synopsis: This patent describes a system for playing a selected version of a video from a disc that stores at least two versions. The system uses information on the disc to combine segments unique to the selected version with segments common to both versions, playing them back seamlessly while skipping segments not part of the selected version (’013 Patent, Abstract).
  • Asserted Claims: 1-4, 7-10, 13-16, 18, 21-23 (Compl. Count III, ¶13).
  • Accused Features: The "Seamless Play" capabilities of unlicensed DVD and Blu-ray devices, which allegedly allow for non-intermittent playback of different video paths (Compl. ¶13).

U.S. Patent 6,151,444 - "Motion Picture Including Within A Duplication Of Frames," issued November 21, 2000

  • Patent Identification: 6151444, "Motion Picture Including Within A Duplication Of Frames," issued November 21, 2000 (Compl. Count IV, ¶17).
  • Technology Synopsis: This patent discloses a method where a video disc includes duplicated frames or overlapping segments. This structure enables a player to create a seamless, customized version of the motion picture by selectively retrieving segments based on user preferences (e.g., for a certain level of explicitness) while skipping others (’444 Patent, Abstract).
  • Asserted Claims: 9, 11, 13, 15-17, 19, 21, 23-24 (Compl. Count IV, ¶18).
  • Accused Features: The "Seamless Play" capabilities of unlicensed DVD and Blu-ray devices, which allegedly create different versions of a video from a single disc (Compl. ¶13).

U.S. Patent 6,208,805 - "Inhibiting A Control Function From Interfering With A Playing Of A Video," issued March 27, 2001

  • Patent Identification: 6208805, "Inhibiting A Control Function From Interfering With A Playing Of A Video," issued March 27, 2001 (Compl. Count V, ¶22).
  • Technology Synopsis: This invention describes a system where a video disc contains segment codes that inhibit player control functions (such as fast-forward or skip) during the playback of certain video segments. This allows content creators to prevent viewers from bypassing specific content like FBI warnings or advertisements (’805 Patent, Abstract).
  • Asserted Claims: 1-9 (Compl. Count V, ¶23).
  • Accused Features: The "User Operation Control" capabilities of unlicensed DVD and Blu-ray devices, which allegedly use segment codes to prohibit playback controls during certain segments (Compl. ¶14).

U.S. Patent 6,463,207 - "Playing A Variable-Content-Video Having A User Interface," issued October 8, 2002

  • Patent Identification: 6463207, "Playing A Variable-Content-Video Having A User Interface," issued October 8, 2002 (Compl. Count VI, ¶27).
  • Technology Synopsis: This patent describes a system for playing a variable-content video from a memory device like an optical disc. The system uses a user interface and segment information on the disc to play a selected version of the video that is different in length from other possible versions stored on the same disc (’207 Patent, Abstract).
  • Asserted Claims: 1, 4, 8, 9, 14, 16, 21 (Compl. Count VI, ¶28).
  • Accused Features: The "Seamless Play" capabilities of unlicensed DVD and Blu-ray devices, which allegedly use a user interface to play different versions of a video (Compl. ¶13).

III. The Accused Instrumentality

Product Identification

  • The complaint accuses "unlicensed DVD-Devices and BD-Devices" sold by Wal-Mart (Compl. ¶¶11, 16).

Functionality and Market Context

  • The complaint alleges that all devices bearing the official DVD or Blu-ray logo must operate in accordance with the "DVD Specifications" (Compl. ¶¶9-10). This compliance allegedly mandates the inclusion of two infringing functionalities:
    • Seamless Play: The ability to play different versions of a video (e.g., "R" and "PG" rated versions, or theatrical and director's cuts) from a single disc in a "non-intermittent" manner. This is achieved by implementing "segment information carried by a DVD-Video" (Compl. ¶13).
    • User Operation Control: The ability to use "segment codes" to prohibit user operations such as fast-forwarding during specific segments like menu screens, advertising, or copyright warnings (Compl. ¶14).
  • The complaint frames these capabilities as "essential" and required by the DVD standard, which is alleged to cover the Nissim Patents (Compl. ¶¶8, 12).

IV. Analysis of Infringement Allegations

The complaint does not provide a detailed claim chart. The following tables summarize the infringement theory based on the functional descriptions provided in the complaint and the elements of the asserted independent claims.

No probative visual evidence provided in complaint.

5,434,678 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
preferencing means for establishing video content preferences responsive to at least one content category... including a violence category Accused devices enable playback "in response to a user's content preferences" such as selecting between "R" and "PG" rated versions. ¶13 col. 5:40-45
memory means for storing a video segment map and a video... Accused devices implement "segment information carried by a DVD-Video" to play different versions of a video from a single disc. ¶13 col. 6:28-38
processing means for automatically selecting video segments... responsive to an application of said video content preferences to said video segment map Accused devices use the segment information and user preferences to select and play "more than one version of a video" from the same source. ¶13 col. 6:42-55
random accessing means for retrieving the selected video segments; and transmitting means for transmitting the retrieved video segments as a continuous video Accused devices provide for the "non-intermittent playback of each of the different paths within a video." ¶13 col. 4:41-49

5,589,945 Infringement Allegations

Claim Element (from Independent Claim 8) Alleged Infringing Functionality Complaint Citation Patent Citation
memory means for storing a video and a segment map directly defining a plurality of video segments of said video Accused devices utilize discs containing "segment information" that defines different paths within a video, such as different parental levels or camera angles. ¶13 col. 5:15-24
selecting means... retrieving means... buffering means... and coordinating means... to seamlessly skip a retrieval of a non-selected video segment... Accused devices provide for the "non-intermittent playback" of different paths by selecting one version and skipping segments belonging to other versions. ¶13 col. 8:1-13
  • Identified Points of Contention:
    • Scope Questions: The core of the case may turn on whether compliance with the DVD Specifications necessarily requires infringement of the asserted claims. A potential defense could argue that the standard allows for non-infringing implementations or that not all accused devices practice the specific methods claimed.
    • Technical Questions: The complaint makes conclusory allegations without providing technical evidence of how the accused devices operate. For claim 1 of the ’678 patent, a question remains as to what specific "preferencing means" the complaint alleges exists in the accused devices and whether it is responsive to content categories like "violence" as claimed. For the ’945 patent, the complaint does not specify the "coordinating means" or explain how buffering and retrieval are managed to achieve the "seamless skip" required by the claim.

V. Key Claim Terms for Construction

  • The Term: "video segment map" (’678 Patent, claim 1)

    • Context and Importance: Plaintiff's infringement theory hinges on equating the "segment information carried by a DVD-Video" with the claimed "video segment map" (Compl. ¶13). The construction of this term will determine if the data structures used in the DVD standard fall within the scope of the claims.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification states the map defines segments with a "first and last frame identifier, and beginning frame identifiers of the next logical segments," a functional description that could be read broadly onto any navigation data providing similar linking information (’678 Patent, col. 6:34-37).
      • Evidence for a Narrower Interpretation: The patent details specific "content descriptive structure[s]" with categories for profanity, violence, and bloodshed, providing a basis to argue that the "map" must include such qualitative content descriptors, which may not be required by the DVD standard (’678 Patent, FIG. 2A; col. 8:30-52).

  • The Term: "seamless" (’678 Patent, claim 1)

    • Context and Importance: This term defines the required quality of playback when switching between non-sequential segments. Whether the accused devices' "non-intermittent playback" meets this standard is a central infringement question.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification defines "seamless" as a transmission that is "undiscernible to the eye" and maintains a "constant video frame transmission rate," which could be interpreted as any playback free of noticeable glitches, stutters, or gaps (’678 Patent, col. 4:41-49).
      • Evidence for a Narrower Interpretation: The patent also describes specific technical architectures to achieve this result, such as using multiple read heads in a "relay race" fashion, suggesting that "seamless" might be construed to require a specific technical method not necessarily present in all accused devices (’678 Patent, col. 16:10-12).

VI. Other Allegations

  • Indirect Infringement: The complaint includes a boilerplate allegation of "indirectly" infringing for each asserted patent (e.g., Compl. Count I, ¶3). However, it does not plead any specific facts to support claims of induced or contributory infringement, such as knowledge or intent based on user manuals, advertisements, or the sale of non-staple components.
  • Willful Infringement: The complaint alleges that Defendant’s infringement was willful based on pre-suit knowledge. It states that Plaintiff "on various occasions" contacted Wal-Mart, informed it of the sale of "unlicensed and infringing DVD-Devices and BD-Devices," identified infringing brands, and offered a license agreement that Wal-Mart did not execute (Compl. ¶16).

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

  1. A central issue will be one of standards-based infringement: Can Plaintiff prove that mere compliance with the DVD Specifications, as alleged for all accused devices, is sufficient to establish that every element of the asserted claims is met? Or can Defendant demonstrate that the standard allows for non-infringing implementations that its accused products utilize?
  2. A key question will be one of definitional scope: Does the functional description of "Seamless Play" and "User Operation Control" in the complaint map directly onto the specific technical limitations of the patent claims? For example, does a generic menu for selecting a "PG" version of a film constitute the "preferencing means...responsive to...a violence category" as required by claim 1 of the ’678 patent, or is there a mismatch between the general functionality of the accused devices and the specific language of the claims?