Topdown Licensing LLC v. Zoom North America LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Topdown Licensing LLC (Texas)
  • Defendant: Zoom North America, LLC (New York)
  • Plaintiff’s Counsel: Loaknauth Law, P.C.; The Mort Law Firm, PLLC
• Case Identification: 2:22-cv-05870, E.D.N.Y., 09/30/2022
• Venue Allegations: Venue is alleged to be proper in the Eastern District of New York because Defendant resides in the district, has a regular and established place of business there, and has allegedly committed acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s LiveTrak L-20 digital mixer and its L-20 Control Companion App infringe a patent related to systems for creating and performing music.
• Technical Context: The technology concerns electronic music instruments that allow a user to compose musical sounds by activating triggers that correspond to pre-defined music programs or sound elements.
• Key Procedural History: The complaint does not mention any prior litigation, IPR proceedings, or licensing history. The asserted patent is subject to a terminal disclaimer.

Case Timeline

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

• Patent Identification: U.S. Patent No. 7,858,870, “System and Methods for the Creation and Performance of Sensory Stimulating Content,” issued December 28, 2010.

The Invention Explained

• Problem Addressed: The patent addresses the challenge of enabling even novice performers to create "pleasing and sympathetic" sensory performances (e.g., music, visuals) without the extensive practice required for traditional instruments (’870 Patent, col. 1:24-33, col. 2:55-63). The goal is to give performers freedom to innovate and create unique performances while ensuring the underlying content remains harmonious.
• The Patented Solution: The invention describes a system where a composer pre-packages sensory content (like MIDI files, audio recordings, or visual elements) into "programs" and "segments" ('870 Patent, col. 1:36-44). A performer then uses a plurality of "triggers" (e.g., breaking a light beam, pressing a foot switch, or using a computer interface) to activate and combine these pre-packaged, sympathetic content segments in novel ways ('870 Patent, col. 3:1-7; Fig. 1). The system is designed so that the resulting combination of sounds is musically coherent.
• Technical Importance: The technology aims to lower the barrier to entry for live electronic music performance by abstracting musical composition from the real-time performance act.

Key Claims at a Glance

• The complaint asserts independent claim 18 ('870 Patent, col. 13:18-32).
• Essential elements of claim 18 include:
  • a plurality of triggers;
  • a control module responsive to the plurality of triggers;
  • a plurality of music programs, the control module configured to generate electronic signals as a function of the plurality of music programs and the plurality of triggers, wherein each said music program comprises sound elements comprising a subset of a predetermined musical composition; and
  • a sound generator configured to generate synchronized sympathetic audible musical sounds as a function of the electronic signals.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The Zoom LiveTrak L-20 and the L-20 Control Companion App (collectively, the "Accused Product") (Compl. ¶7).

Functionality and Market Context

• The complaint alleges the Accused Product is a "music instrument configured to allow a user to compose musical sounds (e.g., composing sounds by mixing music tracks)" (Compl. ¶14).
• The functionality is allegedly provided through a combination of hardware controls on the L-20 mixer (described as "knobs, buttons, faders") and software triggers in the companion app (Compl. ¶15).
• Users can allegedly use these functionalities to "mix/combine sound tracks together" and generate sound by "syncing beats between tracks and fading in between tracks smoothly" (Compl. ¶16, ¶17).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'870 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the term "music program" as defined in the patent—a pre-packaged set of sympathetic content segments ('870 Patent, col. 2:15-21)—can be read to cover "one or more music tracks" that a user provides to a digital mixer, as alleged in the complaint (Compl. ¶16). The patent appears to describe a system where content is authored and pre-correlated, whereas the accused product is described as a mixer for potentially uncorrelated user-supplied tracks.
  • Technical Questions: The complaint alleges the Accused Product generates "synchronized sympathetic audible musical sounds" by "syncing beats between tracks" (Compl. ¶17). It raises the question of whether standard beat-matching and fading functionality in a digital mixer meets the specific "sympathetic" limitation, which the patent describes as content chosen so that different segments "do not visually clash with each other" or are otherwise harmonically or rhythmically pre-coordinated ('870 Patent, col. 2:21-30).

V. Key Claim Terms for Construction

• The Term: "music program"

• Context and Importance: This term is critical because the infringement theory equates it with "one or more music tracks" (Compl. ¶16). The scope of "music program" will determine whether the patent covers general-purpose audio mixers or is limited to systems using the specific pre-packaged, structured content described in the specification.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent states that in an auditory embodiment, content segments within a program "may include, but are not limited to...MIDI files and sound recordings" ('870 Patent, col. 2:17-19), which could suggest any collection of audio tracks might qualify.
  • Evidence for a Narrower Interpretation: The specification repeatedly describes a "program" as something a "composer" arranges and packages, containing content "chosen such that the different segments, when presented to an audience, are sympathetic" ('870 Patent, col. 1:36-39; col. 2:15-21). This suggests a more structured, pre-authored collection of related content, rather than arbitrary user-supplied tracks.

• The Term: "synchronized sympathetic audible musical sounds"

• Context and Importance: This phrase in the final limitation defines the required output of the claimed instrument. The complaint alleges that "syncing beats between tracks" meets this limitation (Compl. ¶17). Whether simple tempo synchronization constitutes "sympathetic" sound generation will be a key issue.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim itself links "synchronized" and "sympathetic," which could be argued to encompass any sounds that are temporally aligned (synchronized) and meant to be played together (sympathetic).
  • Evidence for a Narrower Interpretation: The Summary of the Invention states the content is "preferably chosen such that, even where the performer is a novice, the sensory stimulating data is presented in a pleasing and sympathetic manner" ('870 Patent, col. 1:28-33). The detailed description further explains that "each program's content is selected such that the different segments, when presented to an audience, are sympathetic," providing an example of a color palette in a visual embodiment that does not "visually clash" ('870 Patent, col. 2:19-30). This suggests "sympathetic" may require more than mere temporal synchronization, possibly implying harmonic, melodic, or aesthetic compatibility pre-determined by a composer.

VI. Other Allegations

• Indirect Infringement: The complaint alleges contributory infringement under 35 U.S.C. § 271(c), stating Defendant sells the Accused Product "knowing the same to be especially made or especially adapted for use in the infringement...and not a staple article or commodity of commerce suitable for substantial noninfringing use" (Compl. ¶11). The complaint does not plead facts supporting induced infringement.
• Willful Infringement: The complaint does not contain any allegations of willful infringement or pre-suit knowledge of the patent.

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

This dispute will likely depend on claim construction and the factual characterization of the accused technology. The central questions for the court appear to be:

1. A core issue will be one of definitional scope: Is the term "music program", which the patent describes as a composer-authored collection of pre-correlated content, broad enough to read on a user's collection of potentially unrelated "music tracks" loaded into a digital mixer?

2. A key question of technical meaning will be whether the phrase "synchronized sympathetic audible musical sounds" requires a specific, pre-determined musical or aesthetic relationship between sound elements, as suggested by the patent's specification, or if it is met by the common function of beat-matching and mixing audio tracks found in modern digital audio equipment.