DCT
1:16-cv-04586
Broadsign Intl LLC v. T Rex Property Ab
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BroadSign International, LLC (Delaware)
- Defendant: T-Rex Property AB (Sweden)
- Plaintiff’s Counsel: Brown Rudnick LLP
- Case Name: BroadSign International, LLC v. T-Rex Property AB
- Case Identification: 1:16-cv-04586, S.D.N.Y., 09/15/2016
- Venue Allegations: Venue is alleged to be proper based on Defendant's business activities in the judicial district, including the filing of prior patent enforcement lawsuits asserting the same patents-in-suit.
- Core Dispute: Plaintiff seeks a declaratory judgment that its digital signage software platform does not infringe Defendant's patents related to networked systems for distributing and displaying advertising content.
- Technical Context: The technology at issue involves systems for centrally managing and distributing content to networks of digital displays, a foundational technology for the digital-out-of-home advertising market.
- Key Procedural History: The action arises from Defendant's litigation campaign asserting the patents-in-suit against Plaintiff’s customers, where Defendant identified Plaintiff’s products as the infringing instrumentalities. Plaintiff also alleges that Defendant demanded it take a license to the patents. The complaint further seeks a declaration of intervening rights with respect to the RE39,470 patent, a reissue patent, which could limit or bar damages even if infringement were found.
Case Timeline
| Date | Event |
|---|---|
| 1996-04-26 | Priority Date for ’470 Patent and ’334 Patent |
| 1999-04-28 | Priority Date for ’603 Patent |
| 2002-08-06 | ’603 Patent Issued |
| 2007-01-16 | ’470 Patent Reissued |
| 2008-06-03 | ’334 Patent Issued |
| 2016-09-15 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE39,470 - "Digital Information System"
- Patent Identification: RE39,470, "Digital Information System," Reissued Jan. 16, 2007.
The Invention Explained
- Problem Addressed: The patent addresses the static and inflexible nature of traditional public information displays (e.g., at transit stations), which are often manually updated, uncoordinated, and result in "dead time" or viewer fatigue (RE39,470 Patent, col. 2:25-36).
- The Patented Solution: The invention proposes a networked digital information system where external parties, or "information mediators," can connect to a central control center to dynamically book time slots and transmit content for display on a network of projectors or screens located in various public places (RE39,470 Patent, Abstract; col. 3:5-15). The system is designed to enable real-time, remote updating of content across multiple, geographically dispersed locations.
- Technical Importance: This approach sought to create a flexible, centralized advertising and information network, moving beyond static, site-specific displays to a dynamic, remotely-managed model.
Key Claims at a Glance
- The complaint identifies independent claim 25 and dependent claim 26 as having been asserted against its products (Compl. ¶21).
- Independent Claim 25 (Method):
- Receiving control instructions from at least one external information mediator.
- Using said control instructions to generate an exposure list specifying what, where, when, and for how long information is to be displayed.
- Displaying images at one or more locations in accordance with the exposure list.
- Permitting the exposure list to be dynamically updated.
U.S. Patent No. 7,382,334 - "Digital Information System"
- Patent Identification: 7,382,334, "Digital Information System," Issued Jun. 3, 2008.
The Invention Explained
- Problem Addressed: The patent identifies the same problem as the '470 Patent: conventional public information systems are static, uncoordinated, and cannot be updated dynamically or in real time by external content providers (U.S. 7,382,334 Patent, col. 2:26-54).
- The Patented Solution: The invention describes a system architecture comprising a "computerized control center" that communicates with remote "computerized devices" (e.g., "cinema computers") which in turn control the local displays. This architecture allows "external information mediators" to connect to the control center and manage, in real time, the content shown on the distributed display network (U.S. 7,382,334 Patent, Abstract; Fig. 1).
- Technical Importance: The patent details a specific client-server architecture for implementing a dynamic, networked digital signage system controlled by external entities.
Key Claims at a Glance
- The complaint identifies independent claims 22 and 32 as having been asserted against its products (Compl. ¶27).
- Independent Claim 22 (Method):
- Generating an exposure list with control instructions for coordinating electronic displays.
- Using a control center to create and update the exposure list in real time via dynamic booking of information from mediators.
- The exposure list enables each display to be controlled independently to receive the same or different information.
- Independent Claim 32 (System):
- A computerized control center means with communication interfaces.
- A computerized means for coordinating and controlling electronic displays.
- An exposure handler means for creating and updating an exposure list via dynamic booking from mediators.
U.S. Patent No. 6,430,603 - "System for Direct Placement of Commercial Advertising, Public Service Announcements and Other Content on Electronic Billboard Displays"
- Patent Identification: U.S. Patent No. 6,430,603, "System for Direct Placement of Commercial Advertising, Public Service Announcements and Other Content on Electronic Billboard Displays," Issued Aug. 6, 2002.
Technology Synopsis
The patent addresses the high cost and lack of flexibility of traditional billboard advertising by disclosing a system that allows advertisers to directly access a network of electronic displays ('603 Patent, col. 2:1-12). Through a central server, customers can review available advertising schedules, purchase time slots, and electronically transmit their advertising content to selected displays ('603 Patent, col. 3:1-15).
Asserted Claims
Independent Claim 13 (basis for asserted dependent claims 42 and 43) (Compl. ¶33).
Accused Features
The complaint asserts that Plaintiff's products do not include the "network interconnecting a plurality of electronic displays provided at various geographic locations" as required by claim 13 (Compl. ¶34).
III. The Accused Instrumentality
Product Identification
Plaintiff's "hardware and software solutions to operators of networks of digital displays," including its digital signage platform and "BroadSign Players" (Compl. ¶10). In prior litigation against Plaintiff's customers, these products were referred to as a "digital health media advertising network" and "Digital Waiting Room Screen" product (Compl. ¶¶ 11, 14).
Functionality and Market Context
The accused instrumentality is a software platform that provides an interface for network operators to manage a network of digital displays. Its functions include uploading content, booking and managing advertising campaigns, monitoring network health, and organizing content for playback on associated displays (Compl. ¶10). The complaint positions the Plaintiff as an "industry leader" in providing digital out-of-home software solutions (Compl. ¶2).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
RE39,470 E Infringement Allegations
| Claim Element (from Independent Claim 25) | Alleged Infringing Functionality (as denied by Plaintiff) | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving control instructions from at least one external information mediator | Plaintiff asserts its products do not "receiv[e] control instructions from at least one external information mediator" as required by the claim. | ¶22 | col. 3:5-10 |
| using said control instructions to generate an exposure list | Plaintiff's platform allows its users (network operators) to upload content and manage campaigns, which it contends is distinct from the claimed method. | ¶10, 22 | col. 7:3-12 |
U.S. 7,382,334 B1 Infringement Allegations
| Claim Element (from Independent Claim 22) | Alleged Infringing Functionality (as denied by Plaintiff) | Complaint Citation | Patent Citation |
|---|---|---|---|
| using a control center for coordinating and controlling electronic displays | Plaintiff asserts its products do not "us[e] a control center for coordinating and controlling electronic displays" as required by the claim. | ¶28 | col. 3:26-30 |
| wherein the control center is able to create and update said exposure list in real time... from mediators | Plaintiff's platform, which provides management tools to its customers, is alleged not to constitute the claimed "control center" that interacts with "mediators." | ¶10, 28 | col. 7:46-51 |
Identified Points of Contention
- Scope Questions: A central dispute for the ’470 and ’334 patents will be the definition of "external information mediator" and "control center." The case raises the question of whether a network owner using Plaintiff's software to manage its own network constitutes an "external mediator" interacting with a "control center," or if the patents require a different architecture involving third-party content providers distinct from the network operator.
- Technical Questions: For the ’603 Patent, a key question will be whether Plaintiff's software platform, which enables the operation of a display network, can itself be considered the claimed "network interconnecting a plurality of electronic displays." The analysis will likely focus on whether Plaintiff provides the physical or logical network infrastructure or merely the software to manage it.
V. Key Claim Terms for Construction
"external information mediator" ('470 Patent, Claim 25)
- Context and Importance: This term is critical because Plaintiff's non-infringement theory rests on its products not interacting with such an entity. Practitioners may focus on this term because its construction will determine whether the customers of Plaintiff (the network operators) fall within the scope of the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit, limiting definition, which could support an argument that any entity external to the central control computer providing content qualifies as a "mediator."
- Evidence for a Narrower Interpretation: The specification describes these mediators in the context of "advertising bureaux, the authorities, newspapers, etc." (RE39,470 Patent, col. 2:43-46). This suggests the term may be limited to third-party content originators, as opposed to the owner-operator of the display network itself.
"control center" ('334 Patent, Claim 22)
- Context and Importance: Plaintiff's complaint explicitly denies that its products "use" a "control center" (Compl. ¶28). The viability of this defense depends entirely on whether Plaintiff's software platform constitutes a "control center" as claimed.
- Intrinsic evidence for Interpretation:
- Evidence for a Broader Interpretation: The term could be interpreted broadly to encompass any centralized system, whether a single server or a distributed software platform, that performs the claimed coordinating and updating functions.
- Evidence for a Narrower Interpretation: The patent’s detailed description and Figure 1 depict a specific architecture with a "Control central" (12) containing a "Central computer" (28) that communicates with remote "Cinema computer" devices (34) (U.S. 7,382,334 Patent, Fig. 1; col. 6:17-24). This may support a narrower construction requiring a distinct, centralized hardware and software arrangement that differs from Plaintiff’s platform.
VI. Other Allegations
Indirect Infringement
The complaint seeks a declaratory judgment that it has not indirectly infringed the patents-in-suit, either through inducement or contributory infringement (Compl. ¶¶ 20, 26, 32). The complaint does not set forth a factual basis for these allegations but rather denies them wholesale as part of its request for a judgment of non-infringement.
Intervening Rights
The complaint dedicates a separate cause of action to seeking a declaratory judgment of intervening rights with respect to the ’470 reissue patent (Compl. ¶¶ 36-43). Plaintiff alleges that the claims of the ’470 Patent are not "substantially identical" to the claims of the original patent of which it is a reissue (U.S. Patent No. 6,005,534) and that it was already selling the accused products at the time of the reissue (Compl. ¶¶ 38-40). Under 35 U.S.C. § 252, this could provide a defense against liability for past activities.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can terms like "external information mediator" and "control center," which originate in a patent describing a system for third-party content providers to access a display network, be construed to cover the network's own owner-operator using a modern, cloud-based software-as-a-service (SaaS) platform to manage its own content?
- A second key issue will be one of system boundaries: does Plaintiff's software platform, which provides management tools to operators of display networks, constitute the entire claimed "system" or "network" described in the patents, or is it merely a component used within a larger system assembled by its customers?
- Finally, for the ’470 Patent, a critical question independent of infringement is one of intervening rights: are the asserted claims of the reissue patent substantially broader in scope than the original patent claims? If so, Plaintiff's activities prior to the reissue date may be shielded from liability, significantly impacting any potential damages calculation.