DigiMedia Tech LLC v. Midcontinent Communcations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: DigiMedia Tech, LLC (Georgia)
  • Defendant: Midcontinent Communications (South Dakota)
  • Plaintiff’s Counsel: Reinhardt Wendorf & Blanchfield; Kent & Risley LLC
• Case Identification: 0:24-cv-01473, D. Minn., 04/22/2024
• Venue Allegations: Venue is alleged to be proper in the District of Minnesota on the grounds that Defendant maintains a regular place of business in the district and has committed acts of patent infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s video recording, chatbot, and TV programming guide systems infringe three patents related to remote media delivery, automated data exchange, and personalized content suggestions.
• Technical Context: The patents address technologies from the early-to-late 2000s concerning distributed media recording, automated data modeling for information systems, and early personalized content recommendation engines.
• Key Procedural History: Plaintiff alleges providing pre-suit notice to Defendant for all three patents-in-suit on September 18, 2023. The complaint heavily references an expert declaration and a prior court order concerning U.S. Patent No. 8,160,980, suggesting that the patent eligibility of its claims under 35 U.S.C. § 101 is a known and anticipated point of contention.

Case Timeline

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

U.S. Patent No. 7,065,778 - “Method and System for Providing Media from Remote Locations to a Viewer,” issued June 20, 2006

The Invention Explained

• Problem Addressed: The patent addresses the limitation that television viewers cannot access all programming broadcast throughout the world, because some desired content is only available in remote cities, states, or countries where the viewer is not located (Compl. ¶14; ’778 Patent, col. 1:59-2:8).
• The Patented Solution: The invention proposes a network where a user can request a television show unavailable in their local area using an electronic programming guide (EPG) on their personalized video recorder (PVR). An EPG server computer receives the request, locates one or more PVRs situated within the remote broadcast region of the show, and programs a remote PVR to record it. The recorded show is then transmitted from the remote PVR, potentially through the EPG server, back to the user’s requesting PVR (’778 Patent, Abstract; Compl. ¶17; ’778 Patent, col. 2:9-28).
• Technical Importance: This system describes an early architecture for "place-shifting" content, allowing users to access geographically restricted broadcasts by leveraging a distributed network of internet-connected recording devices (Compl. ¶16).

Key Claims at a Glance

• The complaint asserts independent method claim 31, along with dependent claims 32, 33, and 37 (Compl. ¶18, ¶58).
• The essential elements of independent claim 31 are:
  • A server computer receiving a request from a receiver device for a television show.
  • The server computer locating a plurality of digital video recorders capable of receiving the broadcast.
  • Each of the plurality of digital video recorders receiving a programming instruction from the server computer to record the show.
  • At least one of the plurality of digital video recorders recording the show during its broadcast.
  • The receiver device receiving the recorded television show.

U.S. Patent No. 6,684,220 - “Method and System for Automatic Information Exchange,” issued January 27, 2004

The Invention Explained

• Problem Addressed: The patent identifies the problem that exchanging information between different computer applications is often difficult and time-consuming because they use unique file formats and data structures, requiring manual reformatting and restructuring of data and methods (’220 Patent, col. 1:11-38).
• The Patented Solution: The invention discloses a "loading engine" that automates the process of integrating disparate data sources. It does this by automatically creating "object links" that connect the input and output variables of different "objects" within a data "model." This allows the system to determine data dependencies and perform calculations without a user needing to manually specify the connections between different functions or tables (’220 Patent, Abstract; Compl. ¶28; ’220 Patent, col. 2:1-9).
• Technical Importance: The patent describes a method for achieving data interoperability in complex systems by abstracting data sources into objects and automatically resolving their interdependencies, a foundational concept in data modeling and systems integration (Compl. ¶28).

Key Claims at a Glance

• The complaint asserts independent method claim 10 (Compl. ¶29, ¶66).
• The essential elements of independent claim 10 are:
  • Retrieving a model from an information source, where the model has a plurality of objects, each with an input and an output variable.
  • Automatically identifying the input and output variables of each of the plurality of objects.
  • Automatically creating object links between the corresponding input variables and output variables of each of the plurality of objects.

U.S. Patent No. 8,160,980 - “Information System Based On Time, Space And Relevance,” issued April 17, 2012

Technology Synopsis

The patent describes a system to solve the problem of efficiently providing relevant information to users and intelligently generating content suggestions (Compl. ¶39). The solution involves a client device, a proxy for data collection, and a "data mining cluster" that analyzes user behavior based on time, space, and relevance to build a user profile and provide automatic, periodically updated channel suggestions (’980 Patent, Abstract; Compl. ¶40).

Asserted Claims

The complaint asserts independent system claim 5, along with dependent claims 7-9 (Compl. ¶40, ¶74).

Accused Features

The complaint accuses "Defendant's Midco systems for TV programming guides and similar products" of infringement (Compl. ¶74).

III. The Accused Instrumentality

Product Identification

The complaint accuses three distinct instrumentalities:

1. Defendant's "video recording functionality" ('778 Patent) (Compl. ¶58).
2. Defendant's "chatbot system" ('220 Patent) (Compl. ¶66).
3. Defendant's "Midco systems for TV programming guides and similar products" ('980 Patent) (Compl. ¶74).

Functionality and Market Context

The complaint does not provide detailed technical descriptions of how the accused products operate. It alleges that the video recording functionality performs the steps of remote recording and delivery (Compl. ¶58-59), the chatbot system performs automated information exchange (Compl. ¶66), and the TV programming guide systems provide personalized suggestions based on user profiling (Compl. ¶74). The complaint provides Figure 4 from the '980 Patent, a table of user interaction data, to illustrate the type of data allegedly used by the accused TV guide systems (Compl. ¶47). It also provides Figure 5 from the '980 Patent, a table showing how interaction time and probability are used to calculate a "Weight," to exemplify the suggestion algorithm allegedly used (Compl. ¶48).

IV. Analysis of Infringement Allegations

The complaint references preliminary claim charts in Exhibits D, E, and F, but these exhibits were not filed with the complaint. The infringement theories are therefore summarized in prose based on the complaint's narrative allegations.

'778 Patent Infringement Allegations

The complaint alleges that Defendant’s video recording functionality infringes at least claim 31 (Compl. ¶58). The narrative theory suggests that Defendant operates a system that performs all steps of the claimed method. It further alleges that to the extent a user performs any step, Defendant "conditioned the user's use of the functionality... on the performance of that step" and "controlled the manner and/or timing of the functionality" (Compl. ¶59). This suggests an argument that Defendant either directly infringes by performing every step, or is liable for the entire process even if a user initiates a step like making a request.

'220 Patent Infringement Allegations

The complaint alleges that Defendant's chatbot system infringes at least claim 10 (Compl. ¶66). The infringement theory posits that the chatbot system constitutes a "method for automatic information exchange" that retrieves a data model, identifies input/output variables within it, and automatically creates links between them to provide automated responses to customer inquiries (Compl. ¶28, ¶66).

Identified Points of Contention

• Scope Questions: A primary question for the '778 Patent will be whether a modern, likely centralized or cloud-based, DVR service can be said to "locat[e] a plurality of digital video recorders." The patent's specification appears to describe a peer-to-peer style network of distinct physical PVRs (Compl. ¶17), which may raise the question of whether this language reads on a singular, scaled cloud infrastructure. For the '220 Patent, a question is whether the accused chatbot's knowledge base and query logic constitute a "model" with "objects" that have "object links" created between them, as those terms are used in the patent.
• Technical Questions: For the '778 Patent, a factual question will be what architecture Defendant's video recording service actually uses and whether it involves instructing a distinct, remote recording device as required by the claim. For the '220 Patent, evidence will be needed to show that the chatbot system performs the specific three steps of claim 10—retrieving a model, identifying variables, and automatically creating links—rather than using a different method for information retrieval and response generation.

V. Key Claim Terms for Construction

Term ('778 Patent, Claim 31): "locating a plurality of digital video recorders"

• Context and Importance: The definition of "locating" is critical to determining whether the claim applies to modern cloud-based recording systems or is limited to the distributed PVR network described in the patent. Infringement will depend on whether Defendant's system discovers and selects from multiple distinct recording devices or allocates resources within a centralized system.
• Intrinsic Evidence for a Broader Interpretation: The claim language itself is not explicitly limited to physical, user-owned devices, which may support an interpretation that "digital video recorders" could encompass virtual instances or components within a larger server architecture.
• Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly uses the term "personalized video recorder" (PVR) and describes a scenario where an EPG server locates PVRs "situated within a broadcast region" to record a show, implying physically distinct and geographically distributed hardware (’778 Patent, Abstract; Compl. ¶17).

Term ('220 Patent, Claim 10): "model having a plurality of objects"

• Context and Importance: This term is the foundation of the claimed method. The viability of the infringement claim depends on whether the accused chatbot's data structure can be characterized as a "model" containing "objects" as the patent defines them. Practitioners may focus on this term because its construction will determine whether the claim covers a broad range of data-driven systems or is limited to the specific hierarchical, variable-based object structure detailed in the patent.
• Intrinsic Evidence for a Broader Interpretation: The patent states that "Objects 44 generally include data sets, data tables, or functions" (’220 Patent, col. 3:23-24), which could support a reading that covers various forms of structured data.
• Intrinsic Evidence for a Narrower Interpretation: The patent provides detailed diagrams of specific object models, such as the "atmosphere object" in Figure 3, which contains interconnected "function objects" and "table objects," each with defined inputs and outputs. This detailed embodiment may be used to argue for a narrower construction limited to such structured, interdependent functional blocks (’220 Patent, Fig. 3, col. 5:18-35).

VI. Other Allegations

Indirect Infringement

The complaint alleges that after receiving notice, Defendant induced infringement of the '980 Patent by "distributing the above-referenced products and encouraging others to use them in a way known to infringe" (Compl. ¶76).

Willful Infringement

The complaint alleges that Defendant's infringement of the '980 Patent became willful after it received notice of infringement on September 18, 2023, and continued its infringing activities (Compl. ¶77). The prayer for relief specifically requests enhanced damages for willful infringement of the '980 Patent (Compl. ¶78, Prayer for Relief ¶E).

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

• A central issue will be one of patent eligibility: the complaint dedicates significant attention to arguing that the '980 Patent's claims are not abstract and contain an inventive concept under the Alice framework, citing a supporting expert declaration. The case may therefore turn on whether the '980 Patent's "data mining cluster" for providing user-profile-based suggestions is considered a patent-eligible technological improvement or an unpatentable abstract idea.
• A key evidentiary question will be one of architectural equivalence: for the '778 and '220 patents, which date to the early 2000s, the dispute will likely focus on whether the architecture of Defendant’s modern accused systems maps onto the specific technological frameworks claimed. The court may need to determine if a modern cloud DVR "locates a plurality of" remote recorders ('778 Patent) and if a modern chatbot "automatically creat[es] object links" ('220 Patent) in the specific manner required by the claims, or if there is a fundamental mismatch in technical operation.