1:16-cv-04586
Broadsign Intl LLC v. T Rex Property Ab
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 Identification: 1:16-cv-04586, S.D.N.Y., 07/19/2018
- Venue Allegations: Plaintiff BroadSign alleges venue is proper because Defendant T-Rex is subject to personal jurisdiction in the district and has conducted business there, including filing multiple patent infringement lawsuits asserting the same patents against BroadSign’s customers.
- Core Dispute: Plaintiff seeks a declaratory judgment that its digital signage software and hardware products do not infringe Defendant’s patents, that the patents are invalid, and that it has intervening rights with respect to a reissued patent.
- Technical Context: The technology concerns systems for centrally managing, scheduling, and displaying advertising and other information across a network of digital signs, a field often referred to as digital out-of-home media.
- Key Procedural History: This is a declaratory judgment action filed by a supplier (BroadSign) in response to infringement suits filed by the patent holder (T-Rex) against BroadSign’s customers and competitors. The complaint notes T-Rex has engaged in an extensive litigation campaign, filing dozens of lawsuits. One of the patents-in-suit, the ’470 patent, is a reissue, raising the issue of intervening rights for products sold before the reissue date.
Case Timeline
| Date | Event |
|---|---|
| 1996-05-14 | Earliest 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 |
| 2016-07-11 | T-Rex files "ContextMedia Action" against BroadSign customer |
| 2018-07-19 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE39,470 - "Digital Information System", Issued January 16, 2007
The Invention Explained
- Problem Addressed: The patent describes the limitations of conventional public information displays (e.g., in subway stations), which are static, uncoordinated, and difficult to update, resulting in "dead time" and an inability to display timely information (RE39,470 Patent, col. 1:26-40).
- The Patented Solution: The invention proposes a flexible digital information system where "external information mediators" (such as advertisers) can dynamically control content on a network of displays. A central computer generates an "exposure list" containing control instructions that dictate what content is shown, where, when, and for how long, allowing for real-time, coordinated updates across multiple locations (RE39,470 Patent, Abstract; col. 3:5-20).
- Technical Importance: This system architecture represented a shift from manually managed, static signage to centrally controlled, dynamic digital networks that could be updated in real time (RE39,470 Patent, col. 2:56-62).
Key Claims at a Glance
- The complaint identifies independent method claim 25 as a claim T-Rex has asserted (Compl. ¶53).
- Essential elements of claim 25 include:
- Receiving control instructions from at least one external information mediator.
- Using the control instructions to generate an exposure list specifying three or more items: what content to display, at which locations, when, and for how long.
- Displaying images at one or more locations in accordance with the exposure list.
- Permitting the exposure list to be dynamically updated.
- The complaint notes that T-Rex has also asserted dependent claim 26 (Compl. ¶53).
U.S. Patent No. 7,382,334 - "Digital Information System", Issued June 3, 2008
The Invention Explained
- Problem Addressed: Similar to the ’470 patent, this patent addresses the static and uncoordinated nature of public information systems, which are often updated manually and cannot be changed quickly or centrally (U.S. Patent No. 7,382,334, col. 1:26-53).
- The Patented Solution: The patent describes a digital information system featuring a "computerized control center" that coordinates and controls multiple electronic displays. The system uses an "exposure handler" to create and update an "exposure list" based on dynamically booked information from "external information mediators," enabling independent control over each display in the network (’334 Patent, Abstract; col. 3:20-4:6). Figure 1 illustrates a "Control central" communicating with remote "Cinema computer" stations that drive displays.
- Technical Importance: The invention provided a framework for dynamically managing content across a large, distributed network of digital displays from a central point of control, enabling flexible scheduling and real-time updates (’334 Patent, col. 2:56-62).
Key Claims at a Glance
- The complaint identifies method claim 22 and system claim 32 as claims T-Rex has asserted (Compl. ¶59).
- Essential elements of independent claim 22 include:
- 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 electronic display to be controlled independently to receive the same or different information for exposure.
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 August 6, 2002
Technology Synopsis
The patent addresses the high costs and inflexibility of traditional billboards by disclosing a system where advertisers can directly access a network of electronic displays, such as via the Internet (U.S. Patent No. 6,430,603, col. 2:1-8). The system allows advertisers to transmit their content and schedule its display at selected times and locations, and includes functionalities for content review, verification that an ad was displayed, and generation of reports with demographic analysis (U.S. Patent No. 6,430,603, col. 3:21-29, col. 4:1-6).
Asserted Claims
The complaint indicates T-Rex has asserted claims 42 and 43, which depend from independent system claim 13 (Compl. ¶65).
Accused Features
T-Rex’s infringement allegations, as recounted in the complaint, target BroadSign's customer-facing products like the "Digital Waiting Room Screen product" (Compl. ¶40). BroadSign’s non-infringement argument centers on its products not including a "network interconnecting a plurality of electronic displays provided at various geographic locations" (Compl. ¶66).
III. The Accused Instrumentality
Product Identification
BroadSign’s hardware and software solutions for digital signage, including its "BroadSign Player" product (Compl. ¶11, 45). These are supplied to "Digital Content Providers" who operate networks of displays in public venues and are used in systems accused of infringement, such as the "Digital Waiting Room Screen" product operated by BroadSign's customer, ContextMedia (Compl. ¶10, 32).
Functionality and Market Context
The BroadSign platform provides an interface for managing a network of BroadSign Players connected to digital displays. Its functions include uploading content, booking and managing advertising campaigns, monitoring network health, and organizing content for playback on displays (Compl. ¶11). The complaint recounts that in a prior action, T-Rex alleged that the accused system uses "smart playlist technology [to curate] programming that is customized to each office according to its specific patient population" (Compl. ¶36). BroadSign is described as an industry leader in providing "digital out-of-home software and solutions" (Compl. ¶3).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
RE39,470 Patent Infringement Allegations
| Claim Element (from Independent Claim 25) | Alleged Infringing Functionality (from T-Rex's allegations recounted in the complaint) | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving control instructions from at least one external information mediator | The system "receives control instructions from at least one external information mediator." | ¶36 | RE39,470, col. 17:10-12 |
| using said control instructions to generate an exposure list, said exposure list specifying three or more of the following items... | The system uses "smart playlist technology [to curate] programming that is customized...according to its specific patient population." | ¶36 | RE39,470, col. 17:13-21 |
| displaying images at one or more of said locations in accordance with said exposure list | The system meets this by "delivering 'condition-specific content to patients while they wait.'" | ¶37 | RE39,470, col. 17:22-24 |
| permitting said exposure list to be dynamically updated | The system meets this because "content is refreshed daily and sent to screens based on patient demographic data." | ¶38 | RE39,470, col. 17:25-26 |
7,382,334 Patent Infringement Allegations
The complaint states that T-Rex alleged infringement of claim 22 in an element-by-element textual claim chart in a separate action but does not provide the specific breakdown of those allegations (Compl. ¶39). Therefore, the complaint does not provide sufficient detail for a claim-chart analysis of U.S. Patent No. 7,382,334.
Identified Points of Contention
- Scope Questions: The complaint explicitly raises a key dispute over the scope of claim terms. For the '470 patent, BroadSign asserts its products do not "receiv[e] control instructions from at least one external information mediator" (Compl. ¶54). For the ’334 patent, it asserts its products do not use a "control center" (Compl. ¶60). This raises the question of whether BroadSign’s modern, distributed software platform, which customers use to manage their own content, fits the patents' more centralized architecture of a "control center" receiving instructions from distinct "external" entities.
- Technical Questions: A central technical question is how the functions of BroadSign's software map onto the claimed method steps. For example, regarding the ’470 patent, a court may need to determine what evidence supports the allegation that the accused "smart playlist technology" generates an "exposure list" containing the specific four items required by claim 25 (Compl. ¶36).
V. Key Claim Terms for Construction
The Term: "external information mediator" (’470 Patent, claim 25)
Context and Importance
This term is critical, as BroadSign’s non-infringement argument for the ’470 patent is based on its absence in the accused products (Compl. ¶54). The dispute may turn on whether a "mediator" must be a structurally separate entity from the system user, or if any user inputting scheduling data qualifies.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The related ’334 patent specification, incorporated by reference into the ’470 patent during reissue, describes mediators broadly as any company or private person wishing to use the system, such as advertising agencies (U.S. Patent No. 7,382,334, col. 6:46-54). This may support a functional definition covering any source of scheduling instructions.
- Evidence for a Narrower Interpretation: The figures in the related ’334 patent depict "Information mediators" (24) as distinct boxes connecting to a "Control central" (12) via a modem, separate from the control center itself (U.S. Patent No. 7,382,334, FIG. 1). This could support a structural limitation requiring an entity that is architecturally external to the core system.
The Term: "control center" (’334 Patent, claim 22)
Context and Importance
BroadSign’s primary defense against infringement of the ’334 patent is that its products do not use a "control center" (Compl. ¶60). Practitioners may focus on this term because its construction will determine whether a modern, distributed software architecture falls within the scope of a claim seemingly rooted in a more centralized hardware model.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification describes the "control center" in functional terms, stating it is "able to create and update said exposure list in real time with control instruction fields via dynamic booking of information" (’334 Patent, col. 3:27-31). This could support construing the term to cover any system, regardless of its physical layout, that performs these coordinating functions.
- Evidence for a Narrower Interpretation: The specification describes the "control center" (12) as comprising a "central computer" (28), "databases" (30), and "working stations" (32), and depicts it as a distinct hub in Figure 1 (’334 Patent, col. 6:15-24, FIG. 1). This may support a narrower construction that requires a more physically or architecturally centralized system.
VI. Other Allegations
Indirect Infringement
BroadSign seeks a declaratory judgment that it has not indirectly infringed the patents-in-suit (Compl. ¶52, 58, 64). The complaint notes that T-Rex is aware of allegations that BroadSign's components "are specially made and adapted to function in a way that meets each limitation" of the patents, which is language that tracks a claim for contributory infringement (Compl. ¶42). The overall context of BroadSign supplying a platform to customers who then allegedly perform infringing acts suggests that indirect infringement is a central part of the underlying dispute.
Willful Infringement
The complaint does not mention any specific allegations of willfulness made by T-Rex. However, to establish the existence of a justiciable controversy for its declaratory judgment action, BroadSign alleges that T-Rex has had "direct discussions and in-person meetings with BroadSign" and demanded that it take a license (Compl. ¶47). These facts establishing pre-suit knowledge could, in a direct infringement action, form the basis for a willfulness claim by T-Rex against BroadSign.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural scope: can the patents’ claims, which describe a "control center" and "external information mediators" in what appears to be a centralized client-server model from the 1990s, be construed to cover BroadSign’s modern, likely cloud-based, distributed software platform where the customer is also the direct user managing content?
- A key legal question for the ’470 patent will be the application of intervening rights. Since all original claims were amended during reissue (Compl. ¶71), the court must decide if the asserted reissue claims are "substantially identical" to the original patent's claims. If they are not, BroadSign may be immune from damages for any accused conduct that occurred before the patent was reissued in 2007 (Compl. ¶73).
- A dispositive validity question will be one of patentable subject matter: are the claims, as BroadSign alleges, directed to the impermissible abstract idea of scheduling and displaying content under 35 U.S.C. § 101, or do they recite a specific, concrete, and unconventional improvement to computer network functionality? (Compl. ¶78, 82, 86).