DCT
1:23-cv-10609
Preservation Tech LLC v. Forbes Media LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Preservation Technologies LLC (Delaware)
- Defendant: Forbes Media LLC (Delaware)
- Plaintiff’s Counsel: Law Offices of Andrew L. Crabtree, P.C.; Dinovo Price LLP
- Case Identification: 1:23-cv-10609, S.D.N.Y., 12/05/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant maintains a regular and established place of business in the district, has sold and marketed products there, and a substantial part of the events giving rise to the claim occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant’s website and associated video streaming services infringe a patent related to a digital library system for cataloguing, managing access to, and distributing multimedia data.
- Technical Context: The technology concerns distributed, modular systems for managing large-scale multimedia archives, a domain foundational to modern content delivery networks and on-demand video streaming platforms.
- Key Procedural History: The complaint alleges that the patent-in-suit is owned by the University of Southern California and that Plaintiff holds a license with all necessary rights to enforce it. The complaint also alleges that Defendant has had actual knowledge of the patent since at least August 25, 2015, which may form the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 1998-11-02 | Earliest Priority Date for U.S. Patent 6,353,831 |
| 2002-03-05 | U.S. Patent 6,353,831 Issues |
| 2015-08-25 | Date Defendant Allegedly Acquired Knowledge of Patent |
| 2019-11-01 | Forbes Launches Forbes8 Streaming Platform |
| 2023-12-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,353,831 - "Digital Library System"
The Invention Explained
- Problem Addressed: The patent addresses the limitations of mid-1990s multimedia systems, which the complaint characterizes as using a “closed architecture” that hardwired various components into a single, proprietary system (Compl. ¶21). This monolithic design allegedly prevented the interchangeability of components from different vendors, hindered upgrades, and made the systems incompatible with heterogeneous networks like the internet (Compl. ¶¶21-24). A further problem was the difficulty of performing effective, content-based searches of non-textual material like video (Compl. ¶15.2).
- The Patented Solution: The invention discloses a distributed, modular architecture for a digital library, separating functions into discrete components like a browser, indexing server, archive server, and method player (’831 Patent, Fig. 2; Compl. ¶29). These components communicate through “generalized interfaces” using non-proprietary protocols, which allows for interoperability and the ability to swap components from different vendors (Compl. ¶27). To solve the video search problem, the patent introduces a "catalogue" data structure that represents non-textual video content using interrelated "catalogue elements," "attributes," and "attribute elements," enabling complex, content-based searching (’831 Patent, col. 8:50-9:4; Compl. ¶¶35-36). The complaint provides a system diagram from the patent illustrating this claimed modular architecture. (Compl. ¶27, p. 14).
- Technical Importance: The complaint alleges this modular, non-proprietary approach was a key technological improvement over the rigid systems of the time, providing the flexibility and scalability necessary for large-scale multimedia distribution over networks (Compl. ¶¶13, 28).
Key Claims at a Glance
- The complaint asserts claims 3-9, 12-16, and 18-19 (Compl. ¶111).
- Independent claim 1, on which many asserted claims depend, is a means-plus-function claim with the following essential elements:
- a means for cataloguing multimedia data using at least one catalogue element associated with a plurality of keywords identifying said multimedia data;
- a means for managing access to said cataloguing system; and
- a means for distributing said multimedia data.
- The complaint notes that Plaintiff may limit the asserted claims by election after discovery (Compl. ¶112).
III. The Accused Instrumentality
Product Identification
The "Accused Systems" are identified as Defendant's video streaming services and websites, including www.forbes.com, Forbes premium video, the Forbes channel on YouTube, and the Forbes8 on-demand video network (Compl. ¶¶72-73, 76).
Functionality and Market Context
The Accused Systems are described as a "digital library system used to catalog, provide access to, and distribute online media offerings" (Compl. ¶74). The system allows users to search for videos and clips using keywords (Compl. ¶83). The complaint alleges that the system maintains a "catalogue" of information about the multimedia content—such as titles, categories, and tags—on an indexing server to support these searches (Compl. ¶¶82, 88). A diagram from the patent, included in the complaint, illustrates the structure of this "catalogue," showing interrelated "catalogue elements" like "Segment," "Phrase," and "Keyword." (Compl. ¶40, p. 21). The complaint notes the commercial nature of the services, including a premium "contributor model" and the Forbes8 platform, described as "a Netflix for entrepreneurs" (Compl. ¶¶75-76).
IV. Analysis of Infringement Allegations
'831 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a means for cataloguing multimedia data using at least one catalogue element associated with a plurality of keywords identifying said multimedia data; | The Accused Systems catalogue multimedia using keyword associations and data structures containing descriptive information and tags. This catalogue is maintained by an indexing server. | ¶82, ¶88, ¶114 | col. 8:50-55 |
| a means for managing access to said cataloguing system; and | Defendant's websites provide access to the system through various interfaces, browsers, and devices, allowing users to specify requests and retrieve multimedia data. | ¶74, ¶83, ¶114 | col. 9:33-36 |
| a means for distributing said multimedia data. | The Accused Systems use Defendant's own and third-party Content Delivery Networks (CDNs) to distribute multimedia data for access on user devices. | ¶114 | col. 5:48-54 |
- Identified Points of Contention:
- Scope Questions: Because the asserted independent claim is in means-plus-function format, its scope is limited to the corresponding structures disclosed in the specification and their equivalents. A central question will be whether the specific architecture of the Forbes.com system is structurally equivalent to the "cataloguing system (240)," "indexing server (216)," and "browser (218)" disclosed in the ’831 Patent.
- Technical Questions: The complaint alleges that Forbes's use of "descriptive information and tags" constitutes the claimed "catalogue" (Compl. ¶114). The infringement analysis may turn on whether Forbes's metadata system is structurally equivalent to the highly specific, relational "catalogue" data structure detailed in the patent, which includes self-referential relationships between elements (Compl. ¶¶44, 46). The complaint includes a patent figure showing these self-referential relationships, such as keywords linking to other keywords. (Compl. ¶47, p. 24).
V. Key Claim Terms for Construction
The Term: "means for cataloguing multimedia data"
Context and Importance: As a means-plus-function limitation, the construction of this term will define the specific hardware and software structures covered by the claim. The outcome of this construction will be critical, as the infringement analysis will compare the accused system's architecture to the structure identified in the patent's specification.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the corresponding structure is the combination of the "cataloguing system (240)" and "indexing server (216)" as a whole, which performs the general function of creating an indexed catalogue of multimedia content based on keywords, without being strictly limited to every detail of the disclosed data schema.
- Evidence for a Narrower Interpretation: A party may argue that the corresponding structure is not just any indexing server but is necessarily one that implements the specific data structure detailed in the specification, including the use of interrelated "catalogue elements," "attributes," and the associative, whole-part, and inheritance relationships between them as described in the patent (’831 Patent, col. 17:21-18:65).
The Term: "catalogue"
Context and Importance: This term is central to the patent's solution for searching non-textual data. Practitioners may focus on this term because it appears to be a term of art coined by the patentee. Its construction will determine whether a simple keyword-tagging system can infringe, or if a more complex, relational database structure is required.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract describes the catalogue simply as a tool "that can be used to perform content-based searches" (’831 Patent, Abstract). The specification also states more generally that the "catalogue includes one or more catalogue elements which can be a complex multimedia asset" (’831 Patent, col. 8:51-53).
- Evidence for a Narrower Interpretation: The detailed description provides a highly specific embodiment of the catalogue, comprising distinct "catalogue elements" (e.g., "Segment," "Phrase," "Keyword"), "attributes," and "attribute elements" that are interrelated through pointers and hierarchies (’831 Patent, Fig. 7A; col. 14:23-65). The term may be construed as being limited to this specific, disclosed structure.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant provides instructions and software (e.g., via its contributor platform and user interfaces) that encourage and enable end-users and content providers to perform the steps of the claimed methods, such as cataloguing and retrieving multimedia (Compl. ¶¶97, 102).
- Willful Infringement: The complaint alleges that Defendant's infringement has been willful. This allegation is based on purported pre-suit knowledge of the ’831 Patent, which the complaint claims Defendant has had since "on or about August 25, 2015" (Compl. ¶¶108, 119).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of structural equivalence under 35 U.S.C. § 112(f): Does the architecture of the Forbes.com content management system possess a structure that is identical or equivalent to the specific, modular "cataloguing system" and relational "catalogue" data structure disclosed in the '831 patent's specification?
- A key evidentiary question will be one of definitional scope: Is the patent's coined term "catalogue" limited to the complex, multi-dimensional data structure with specific inter-element relationships (e.g., "segment," "phrase," whole-part) shown in the preferred embodiments, or can it be construed more broadly to cover the metadata and tagging database allegedly used by the Accused Systems?
- Given the allegation of pre-suit knowledge dating back to 2015, a significant question for damages will be willfulness: Does the evidence support the claim that Defendant's continued operation of its systems after receiving notice created an objectively high and known risk of infringement?