DCT
1:20-cv-08998
Global Interactive Media Inc v. MusicToGo LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Global Interactive Media, Inc. (Belize)
- Defendant: MusicToGo, LLC (New York)
- Plaintiff’s Counsel: BUTZEL LONG, PC
- Case Identification: 1:20-cv-08998, S.D.N.Y., 10/27/2020
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is a New York corporation with its principal place of business in the Southern District of New York, conducts continuous and systematic business in the district, and the infringement claims arise from these activities.
- Core Dispute: Plaintiff alleges that Defendant’s "TuneGenie" online radio programming guide infringes patents related to systems and methods for accessing information about broadcast content and facilitating purchases.
- Technical Context: The technology relates to interactive media systems that allow consumers to identify and learn more about content, such as music, that they hear on a radio or television broadcast.
- Key Procedural History: The asserted patents share a common lineage. U.S. Patent No. 8,032,907 is a continuation of an application that is a continuation of the application for U.S. Patent No. 6,314,577, which itself is a continuation of an earlier application filed in 1994. This long prosecution history and family relationship suggest that the specifications may be highly similar and that prosecution history estoppel could be a relevant factor in claim construction.
Case Timeline
| Date | Event |
|---|---|
| 1994-10-27 | Earliest Priority Date for ’577 & ’907 Patents |
| 2001-11-06 | U.S. Patent No. 6,314,577 Issued |
| 2011-10-04 | U.S. Patent No. 8,032,907 Issued |
| 2020-10-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,032,907 - “System to Syncronize and Access Broadcast Information”
- Patent Identification: U.S. Patent No. 8,032,907, issued October 4, 2011.
The Invention Explained
- Problem Addressed: The patent's background section describes the difficulty radio listeners face when they hear a song they wish to purchase. They must remember the artist and title, if announced, and then travel to a store, creating a disconnect between the "impulse to buy" and the ability to act on it (’907 Patent, col. 2:44-65).
- The Patented Solution: The invention provides an automated system that enables listeners to access information about broadcast content using a device like a telephone. A central system synchronizes program schedule information with the actual broadcast, allowing a user to inquire about a recently played song and receive details (’907 Patent, Abstract; col. 3:1-12). The system is designed to support multiple radio stations simultaneously to create a mass audience for direct marketing (’907 Patent, col. 3:25-44).
- Technical Importance: The invention aimed to bridge the gap between broadcast media as a promotional tool and its use as a direct sales channel by automating the information retrieval and transaction process.
Key Claims at a Glance
- The complaint asserts independent method claim 18 (Compl. ¶11).
- Essential elements of claim 18 include:
- broadcasting program material.
- receiving user inquiries that include broadcast identifier information.
- creating a program description file for future broadcasts.
- communicating the program information into a data processor.
- synchronizing the communicated program information with the broadcasted program material.
- using the data processor to communicate program information corresponding to the user's inquiry.
- The complaint notes infringement of "at least one of the 90 methods and systems claimed" but only illustrates infringement with respect to claim 18 (Compl. ¶10-11).
U.S. Patent No. 6,314,577 - “Apparatus and Method to Generate and Access Broadcast Information”
- Patent Identification: U.S. Patent No. 6,314,577, issued November 6, 2001.
The Invention Explained
- Problem Addressed: The patent identifies the high cost and logistical complexity for individual radio stations to operate a direct marketing business, as they lack the necessary scale and infrastructure for order fulfillment, customer service, and previewing musical excerpts (’577 Patent, col. 2:2-11).
- The Patented Solution: The invention describes a centralized, automated system that aggregates broadcast information from multiple stations. As depicted in Figure 1, the system uses a "Programmed Data Processor" (1010) to receive program schedules (1000), correlate them with descriptive data and audio files (1080), and interface with users via a telephone system (1020) to provide information and process orders (’577 Patent, col. 3:11-34; Fig. 1).
- Technical Importance: The technology proposed a scalable, centralized model to make direct-to-consumer sales viable for the radio broadcast industry.
Key Claims at a Glance
- The complaint asserts independent method claim 94 (Compl. ¶14).
- Essential elements of claim 94 include:
- broadcasting a radio or television broadcast.
- receiving user inquiries.
- creating a program description file.
- communicating program list information into a data processor.
- correlating the program descriptions with the program list information and generating information in a database responsive to a broadcast identifier.
- using the data processor to communicate the program description file responsive to the user inquiry.
- The complaint alleges infringement of "at least one of the 130 methods and systems claimed" but only details infringement of claim 94 (Compl. ¶13-14).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant's "online radio programming guide known as 'TuneGenie,'" accessible at www.tunegenie.com (Compl. ¶2).
Functionality and Market Context
- The complaint alleges that the TuneGenie guide provides information about program material broadcast by radio and television stations in U.S. cities, including New York (Compl. ¶11a, ¶14a). It is alleged to allow a user to make inquiries regarding broadcast programs (Compl. ¶11b, ¶14b), and it creates files describing programs prior to their broadcast (Compl. ¶11c, ¶14c). The complaint alleges TuneGenie communicates this program information to the consumer (Compl. ¶11f, ¶14f). The complaint does not provide further technical detail on the operation of the TuneGenie guide or its market position.
IV. Analysis of Infringement Allegations
The complaint’s infringement allegations are presented in a narrative format that mirrors the language of the asserted claims. No probative visual evidence provided in complaint.
’907 Patent Infringement Allegations
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a "method for providing recipients of a broadcast with automated information about program material, the method comprising: broadcasting program material in at least one broadcast[.]" | "MTG's TuneGenie programming guide provided information about program material that is broadcast by television stations in New York City." | ¶11a | col. 19:13-16 |
| "receiving one or more user inquiries from one or more recipients of said at least one broadcast, said one or more inquiries including broadcast identifier information . . . ." | "...a user of MTG's TuneGenie programming guide could inquire regarding the programs being broadcast in New York City." | ¶11b | col. 19:17-19 |
| "creating a program description file comprising program information related to program material to be broadcast in the future[.]" | "MTG's TuneGenie programming guide, prior to the broadcast of programs, created files describing the programs to be broadcast." | ¶11c | col. 19:20-22 |
| "communicating the program information into a programmed data processor[.]" | "...MTG had a programmed data processor into which the program description file was loaded." | ¶11d | col. 19:23-24 |
| "synchronizing said communicated program information with said program material of said at least one broadcast[.]" | "MTG's TuneGenie programming guide synchronized the description of a program with the broadcast of that program." | ¶11e | col. 19:25-26 |
| "using said data programmed data processor to communicate, to the one or more recipients, program information that corresponds to the broadcast identifier information included in said one or more inquiries..." | "MTG's TuneGenie programming guide communicated the program information to the consumer." | ¶11f | col. 19:28-35 |
’577 Patent Infringement Allegations
| Claim Element (from Independent Claim 94) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a "method for providing listeners or viewers of a radio or television broadcast with automated information about program material, comprising the steps of: broadcasting at least one radio or television broadcast[.]" | "MTG's TuneGenie programming guide provided information about program material that is broadcast by television stations in New York City." | ¶14a | col. 23:15-18 |
| "receiving user inquiries from a listener or viewer of said radio or television broadcast[.]" | "...a user of MTG's TuneGenie programming guide could inquire regarding the programs being broadcast in New York City." | ¶14b | col. 23:19-20 |
| "creating a program description file[.]" | "MTG's TuneGenie programming guide, prior to the broadcast of programs, created files describing the programs to be broadcast." | ¶14c | col. 23:21-21 |
| "communicating program list information into a programmed data processor[.]" | "...MTG had a programmed data processor into which the program description file was loaded." | ¶14d | col. 23:22-23 |
| "correlating said program descriptions of program material with said program list information and generating information in a database responsive to only a broadcast identifier[.]" | "MTG correlated the description of a program with the broadcast of that program." | ¶14e | col. 23:24-27 |
| "using said programmed data processor to communicate said program description file responsive to said user inquiry." | "MTG's TuneGenie programming guide communicated the program information to the consumer." | ¶14f | col. 23:28-30 |
Identified Points of Contention
- Technical Questions: The complaint's allegations are conclusory and directly track the claim language. A central question will be what evidence exists that the TuneGenie guide performs the specific functions claimed. For instance, what technical process constitutes the "synchronizing" of program information with the live broadcast as alleged for the ’907 Patent (Compl. ¶11e)? Similarly, what evidence demonstrates that TuneGenie performs the complex step of "correlating" program descriptions with a program list and "generating information in a database" as required by the ’577 Patent (Compl. ¶14e)? The complaint provides no facts about the architecture or real-time operation of the accused service to substantiate these allegations.
- Scope Questions: The dispute may turn on the scope of key functional terms. For example, does merely providing a pre-published electronic program guide meet the "synchronizing" limitation of the ’907 Patent, or does the claim require a more active, real-time linkage between the data system and the broadcast signal, as some embodiments in the patents suggest?
V. Key Claim Terms for Construction
U.S. Patent No. 8,032,907
- The Term: "synchronizing"
- Context and Importance: This term is central to the method of Claim 18. Its definition will determine whether a system that provides a static, pre-loaded schedule infringes, or if a more dynamic, real-time link to the live broadcast is required. Practitioners may focus on this term because the complaint's allegation of "synchronizing" is purely conclusory (Compl. ¶11e).
- Intrinsic Evidence for Interpretation (from related ’577 Patent):
- Evidence for a Broader Interpretation: The patent abstract refers generally to a database "indexed by the broadcast's program list or schedule," which might suggest that having a time-indexed schedule is sufficient for "synchronizing" (’577 Patent, Abstract).
- Evidence for a Narrower Interpretation: The detailed description discloses specific, technical methods for synchronization, such as inserting a signal (e.g., a tone or pulse) into the broadcast to trigger recording or data coordination, or using a "synchronized time schedule" where system events are initiated at the same time as the broadcast (’577 Patent, col. 4:35-48; col. 4:50-55). This may support a narrower construction requiring an active, signal-based link to the broadcast itself.
U.S. Patent No. 6,314,577
- The Term: "correlating... and generating information in a database"
- Context and Importance: This functional step in Claim 94 describes a specific database operation. The case may depend on whether the TuneGenie system's data handling meets this two-part limitation. The plaintiff's allegation that MTG "correlated the description of a program with the broadcast of that program" is vague and does not address the "generating information" portion of the claim (Compl. ¶14e).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The Summary of the Invention describes the system's object as tracking audio segments to let a listener recall and preview pieces, which could imply a general association of data is sufficient (’577 Patent, col. 2:35-45).
- Evidence for a Narrower Interpretation: Figure 1 and the accompanying description detail a complex system of distinct data files (e.g., Program Schedule File 1060, Data Description Archive File 1066, Audio Description File 1070) that are linked via pointers (’577 Patent, Fig. 1; col. 7:46-51, col. 8:36-46). This detailed architecture showing the creation and linking of discrete data structures could support a narrower construction of what it means to "correlate" and "generate" information in the claimed database.
VI. Other Allegations
The complaint does not contain allegations of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary question will be one of technical operation: Does the accused "TuneGenie" online guide perform the specific, active functions of "synchronizing" program data with a live broadcast (as claimed in the ’907 Patent) and "correlating... and generating" database information (as claimed in the ’577 Patent), or does it function as a more conventional electronic program guide? The complaint’s bare, conclusory allegations provide no factual basis to answer this question.
- The case will also involve a core issue of claim construction: Can the functional terms "synchronizing" and "correlating" be interpreted broadly enough to read on the likely operation of a web-based program guide, or will the detailed, signal-based embodiments described in the patent specifications limit their scope to require a more direct, technical integration with the broadcast signal itself?