DCT

1:18-cv-08368

PersonalWeb Tech LLC v. Vimeo Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-08368, S.D.N.Y., 09/13/2018
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the Southern District of New York and has committed alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s website, vimeo.com, and its methods for managing and delivering web content infringe patents related to the use of content-based identifiers to locate, verify, and control access to data in distributed computer networks.
  • Technical Context: The technology concerns using cryptographic hashes of file content as unique identifiers ("True Names"), a foundational technique for data deduplication, caching, and integrity verification in modern cloud computing and content delivery networks (CDNs).
  • Key Procedural History: The complaint notes that the patents-in-suit have been successfully enforced against third parties, resulting in settlements and non-exclusive licenses. It also states that the last of the patents-in-suit has expired, indicating the action is for recovery of past damages.

Case Timeline

Date Event
1995-04-11 Priority Date for all Patents-in-Suit
2005-08-09 U.S. Patent No. 6,928,442 Issued
2010-09-21 U.S. Patent No. 7,802,310 Issued
2012-01-17 U.S. Patent No. 8,099,420 Issued
2018-09-13 Complaint Filed

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

U.S. Patent No. 6,928,442, “Enforcement and Policing of Licensed Content Using Content-Based Identifiers,” Issued August 9, 2005

The Invention Explained

  • Problem Addressed: The patent’s background describes the inefficiency of conventional file identification systems, where data is identified by a name relative to a specific context (e.g., a file path). This approach creates issues in large networks, such as data duplication and the inability to verify that a retrieved file is the correct one based on its name alone (Compl. ¶¶12-13; ’442 Patent, col. 2:5-25).
  • The Patented Solution: The invention proposes a system where data items are identified by a "substantially unique" identifier, or "True Name," generated by applying a cryptographic function (such as a hash or message digest function) to the content of the data item itself (’442 Patent, Abstract; col. 5:6-12). This content-based identifier allows any processor in a network to identify, manage, and verify data without relying on its name or location, thereby enabling more efficient storage and access control (’442 Patent, col. 3:7-26).
  • Technical Importance: This method of content-based addressing is a core principle behind data deduplication and content integrity verification in distributed storage systems and content delivery networks (CDNs) (Compl. ¶11).

Key Claims at a Glance

  • The complaint asserts independent claim 10 and dependent claim 11 (Compl. ¶48).
  • Independent Claim 10 is a method claim with the following essential elements:
    • In a system with files distributed across multiple computers, obtaining a name for a data file based on a function of the file's contents.
    • Using that name to determine if a copy of the data file is present on at least one of the computers.
    • Determining if a present copy of the data file is an "unauthorized copy or an unlicensed copy."

U.S. Patent No. 7,802,310, “Controlling Access to Data in a Data Processing System,” Issued September 21, 2010

The Invention Explained

  • Problem Addressed: The patent addresses the challenge of managing access to and distribution of data in large, networked data processing systems where traditional naming conventions are inadequate (’310 Patent, col. 1:21-26).
  • The Patented Solution: The invention describes a method for controlling content distribution using content-dependent names. A "first computer" (e.g., a server) receives a request from a "second device" (e.g., a client browser) that includes a content-dependent name for a piece of content. The first computer uses this name to determine whether the content is "unauthorized or unlicensed" and, based on that determination, either permits or denies the request to access the content (’310 Patent, Abstract; col. 2:1-11). This allows a server to validate a client's cached data without requiring a full data transfer.
  • Technical Importance: The claimed method mirrors the logic of conditional HTTP GET requests using "ETag" headers, a standard mechanism for optimizing web performance by validating browser and intermediary caches to reduce bandwidth consumption (Compl. ¶¶31-33).

Key Claims at a Glance

  • The complaint asserts at least independent claim 20 (Compl. ¶56).
  • Independent Claim 20 is a method claim with the following essential elements:
    • Controlling the distribution of content from a first computer to another computer in response to a request.
    • The request includes a "content-dependent name" (e.g., a hash) of a particular data item.
    • Based on that content-dependent name, the first device either (A) permits the content to be provided if it is not determined to be unauthorized or unlicensed, or (B) does not permit the content to be provided if it is determined to be unauthorized or unlicensed.

U.S. Patent No. 8,099,420, “Accessing Data in a Data Processing System,” Issued January 17, 2012

  • Technology Synopsis: This patent describes a system that implements the methods of the earlier patents. It claims a system comprising hardware and software configured to determine content-dependent identifiers for data items and then selectively permit access to those items based on whether their identifiers correspond to an entry in one or more databases (’420 Patent, Abstract). This enables a network to use a central or distributed database of content hashes to manage authorization and access control efficiently (’420 Patent, col. 2:1-11).
  • Asserted Claims: The complaint asserts claims 25-27, 29, 30, 32, 34-36, and 166, identifying Claim 166 as an independent system claim (Compl. ¶63).
  • Accused Features: The accused features are Defendant’s web servers and associated systems that use databases of ETag values associated with URIs to selectively determine whether a requesting computer can access its cached content or must receive new authorized content (Compl. ¶¶64, 68).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentality is Defendant Vimeo, Inc.’s website (vimeo.com) and its associated system and methods for providing webpage content to users (Compl. ¶¶29, 31).
  • Functionality and Market Context: The complaint alleges that Defendant’s system uses content-based "ETag" values to manage the distribution of webpage files and assets. When a user's browser (or an intermediate cache) requests a file it has previously cached, it sends a conditional HTTP GET request containing the file's ETag in an "If-None-Match" header (Compl. ¶¶31, 37, 39). Defendant’s servers compare this received ETag to the current ETag for the requested file. If the ETags match, the server responds with an HTTP 304 "Not Modified" message, instructing the browser to use its cached version. If they do not match, the server sends an HTTP 200 "OK" response with the new file content and a new ETag (Compl. ¶¶41-42). This process allegedly reduces bandwidth and computational load on Defendant's origin servers by serving full content only when it has changed (Compl. ¶33). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'442 Patent Infringement Allegations

Claim Element (from Independent Claim 10) Alleged Infringing Functionality Complaint Citation Patent Citation
obtaining a name for a data file, the name being based at least in part on a given function of the data... Defendant allegedly generates or obtains "ETags" for its webpage and asset files by applying a hash function to the contents of those files. ¶50 col. 5:6-12
determining, using at least the name, whether a copy of the data file is present on at least one of said computers... Defendant’s origin servers or intermediate cache servers receive a conditional GET request with an "If-None-Match" header containing an ETag and compare that ETag to the ETag associated with the requested URI to determine if a copy of the content is present. ¶51 col. 7:35-40
determining whether a copy of the data file that is present... is an unauthorized copy or an unlicensed copy... If the received ETag matches the server's ETag, the server determines the downstream copy is "authorized" and sends an HTTP 304 response. If there is no match, it determines the downstream copy is "unauthorized" and sends an HTTP 200 response with the new content. ¶52 col. 1:1-4
  • Identified Points of Contention:
    • Scope Questions: A central issue may be the interpretation of "unauthorized copy or an unlicensed copy." The complaint equates a cache mismatch (a technical state of being outdated) with being "unauthorized" (Compl. ¶52). Given the patent's title and discussion of "licensed content," a court may need to decide if this claim language, which connotes a legal or rights-management status, can be construed to cover standard cache invalidation.

'310 Patent Infringement Allegations

Claim Element (from Independent Claim 20) Alleged Infringing Functionality Complaint Citation Patent Citation
controlling distribution of content from a first computer to at least one other computer, in response to a request... Defendant’s upstream servers ("first computer") control the distribution of webpage assets to downstream caches and browsers ("other computer") in response to conditional GET requests. ¶¶57-58 col. 1:21-23
the request including at least a content-dependent name of a particular data item, the content-dependent name being based at least in part on a function... wherein the function comprises a message digest function or a hash function... The conditional GET requests include an "ETag", which the complaint alleges is a content-dependent name generated by hashing the data item's contents. ¶58 Abstract
based at least in part on said content-dependent name... the first device (A) permitting the content to be provided... if it is not determined that the content is unauthorized or unlicensed, otherwise, (B) ... not permitting the content... If the ETag in the request matches the server's stored ETag, the server determines the content is "authorized" and sends an HTTP 304 response, permitting access to the cached content. If it does not match, the server determines the content is no longer authorized and sends an HTTP 200 response with new content, not permitting access to the old content. ¶59 col. 2:1-11
  • Identified Points of Contention:
    • Technical Questions: The infringement theory for an HTTP 304 "Not Modified" response raises the question of whether this action meets the claim limitation of "controlling distribution of content from a first computer to at least one other computer." When a 304 response is sent, no content is actually transmitted from the server; rather, the browser is instructed to use its own local copy. The analysis may turn on whether sending an instruction constitutes "controlling distribution."

V. Key Claim Terms for Construction

  • The Term: "unauthorized copy or an unlicensed copy of the data file" (’442 Patent, Claim 10)

    • Context and Importance: This term's construction is critical because the plaintiff's infringement theory hinges on equating a technically outdated cached file (identified by an ETag mismatch) with an "unauthorized" file. Practitioners may focus on this term because its definition could determine whether standard web caching mechanisms fall within the scope of a patent seemingly directed at digital rights management.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification broadly defines "data items" as any "sequence of bits" and does not explicitly limit "unauthorized" to a legal context (’442 Patent, col. 1:55-60). The system is described as tracking uses of files "by content for accounting purposes," which could be interpreted to include technical authorization states (’442 Patent, col. 4:33-35).
      • Evidence for a Narrower Interpretation: The patent is titled “Enforcement and Policing of Licensed Content.” The abstract states a copy is "only provided to licensed (or authorized) parties." The specification also describes a "license table" for tracking users "licensed to use" a file, suggesting the terms relate to legal rights and permissions, not just cache validity (’442 Patent, col. 8:52-56).

  • The Term: "controlling distribution of content from a first computer to at least one other computer" (’310 Patent, Claim 20)

    • Context and Importance: The meaning of this phrase is central to determining if an HTTP 304 "Not Modified" response infringes. If "distribution of content" requires an actual transmission of that content from the first computer, then sending a 304 message may not meet this limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent describes a system to "control the distribution of data items" generally, and one could argue that issuing a command that dictates whether content is or is not delivered constitutes "control" of the distribution process, even if no bits are sent in a particular instance (’310 Patent, col. 1:21-23).
      • Evidence for a Narrower Interpretation: The plain language "distribution of content from a first computer to at least one other" implies a transfer of the "content" itself. In an HTTP 304 scenario, the only thing distributed "from" the first computer is a header, not the content at issue. The content is accessed locally by the second computer from its own cache.

VI. Other Allegations

  • Indirect Infringement: While the complaint does not contain formal counts for indirect infringement, it alleges that Defendant "caused" downstream intermediate caches and endpoint caches to perform certain steps, such as obtaining ETags in HTTP responses (Compl. ¶50). This phrasing may suggest a potential theory of induced infringement, though the requisite elements of knowledge and specific intent are not explicitly pled.

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

  • A core issue will be one of definitional scope: can the term "unauthorized copy," which appears in the context of "policing licensed content," be construed to cover a technically outdated file in a web cache, a common and standardized feature of internet architecture?
  • A key evidentiary question will be one of functional operation: does a server sending an HTTP 304 "Not Modified" response—an instruction to a browser to use its own local data—constitute "controlling distribution of content from a first computer to at least one other computer" as required by the claims, or is there a fundamental mismatch in where the content originates in that scenario?