Err Content IP LLC v. Spotify USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Err Content IP, LLC (Texas)
  • Defendant: Spotify USA, Inc. (Delaware)
  • Plaintiff’s Counsel: David J. Hoffman
• Case Identification: 1:24-cv-09530, S.D.N.Y., 12/13/2024
• Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established place of business in the Southern District of New York and having committed alleged acts of infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s systems for displaying content, such as the Spotify service, infringe a patent related to providing supplemental "extra content" in conjunction with a "main content" stream, particularly in a multi-device context.
• Technical Context: The technology concerns methods for enhancing media consumption by providing synchronized, related information (extra content) on a primary or secondary screen without interrupting the main media program.
• Key Procedural History: Plaintiff states it has entered into settlement licenses with several other entities but asserts these licenses did not involve admissions of infringement or authorize the production of a patented article, which Plaintiff argues obviates patent marking requirements under 35 U.S.C. § 287.

Case Timeline

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

• Patent Identification: U.S. Patent No. 10,721,542, Method and Device for Providing a Main Content and an Extra content to a User Through Reference Item, issued July 21, 2020.

The Invention Explained

• Problem Addressed: The patent describes a problem where users consuming media (the "main content") must interrupt their experience to access related supplemental information (the "extra content"). Existing systems forced the user to "leave the main content for tracking the reference item" and were generally limited to displaying this extra content on the same device (’542 Patent, col. 1:35-45).
• The Patented Solution: The invention proposes a method where "metadata" is broadcasted together with the main content from a first source. This metadata links to extra content from a different, second source. The metadata can then be forwarded to a second device (e.g., a tablet), allowing the second device to retrieve and display the extra content while the first device (e.g., a TV) continues to display the main content uninterrupted (’542 Patent, Abstract; col. 2:22-38). The system is illustrated using a TV as the first device and a tablet PC as the second device ( Compl. ¶7; ’542 Patent, Fig. 3).
• Technical Importance: The described method facilitates a "second screen" experience, where a user can interact with supplemental data on one device (e.g., a phone) that is synchronized with primary content playing on another device (e.g., a smart speaker or TV).

Key Claims at a Glance

• The complaint asserts claims 1-14 (Compl. ¶8). Independent claim 1 is representative of the two-device embodiment.
• Independent Claim 1 requires:
  • Receiving a specific main content and metadata together from a first source.
  • Displaying the main content on a first device.
  • Forwarding the metadata to a second device, where the forwarding is "executed by scanning said metadata by said second device."
  • The second device receiving extra content from a second, different source.
  • Simultaneously displaying the main content on the first device and the extra content on the second device.
  • The extra content changing in correspondence to changes in the main content.
• The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶8).

III. The Accused Instrumentality

Product Identification

The complaint accuses Spotify's "systems and methods for displaying content from sources" (Compl. ¶8). It specifically references a URL associated with the Spotify Connect feature, which allows users to control media playback on one device from another (Compl. ¶12).

Functionality and Market Context

The complaint alleges that Defendant "develops, manufactures, maintains, operates, sells and administers systems and methods for displaying content from sources" (Compl. ¶8). The functionality at issue appears to be the ability to use the Spotify application on one device (e.g., a smartphone) to control and potentially display information related to music playing on another device (e.g., a smart TV or speaker). The complaint does not provide specific technical details on how the accused Spotify systems operate.

IV. Analysis of Infringement Allegations

The complaint alleges infringement but does not provide the referenced preliminary claim chart (Exhibit B). The following chart summarizes the infringement theory for the two-device embodiment based on the narrative allegations in the complaint.

'542 Patent Infringement Allegations

• Identified Points of Contention:
  • Technical Question: Claim 1 explicitly requires that forwarding metadata is "executed by scanning said metadata by said second device." The patent specification provides examples like QR-codes or bar codes (’542 Patent, col. 4:5-10). A central question will be whether Spotify’s system, which likely uses network-based protocols for device communication, performs an action that can be construed as "scanning."
  • Scope Questions: The case may turn on the definition of "metadata" and whether it is "broadcasted together" with the "main content" from a "first source" in the accused system. It raises the question of whether control data sent between Spotify clients over a user's local network constitutes "metadata" that is "broadcasted" from a "first source" in the manner contemplated by the patent.
  • Evidentiary Question: What evidence does the complaint provide that the "extra content" (e.g., album art or artist info on a phone) comes from a "second source" that is meaningfully "different" from the "first source" of the main content (the music stream), as defined by the patent?

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "scanning"

• Context and Importance: This term appears central to the infringement analysis for claim 1. The claim requires forwarding metadata be "executed by scanning." If this term is construed narrowly to mean optical scanning of a visual code, it may present a significant challenge to the infringement allegation against a system based on network communication protocols.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not explicitly define "scanning." A party might argue it should be given its plain and ordinary meaning, which could potentially encompass electronic scanning of data streams or networks, not just optical scanning.
  • Evidence for a Narrower Interpretation: The specification repeatedly links this concept to visual codes. It states that an embodiment is "particularly advantageous when using existing visual codes systems, such as QR-codes, bar codes or optical machine-readable data" (’542 Patent, col. 4:5-10). Further, it describes forwarding by "scanning said reference item by means of said second device" (’542 Patent, col. 5:40-43), which in the context of the provided examples (Fig. 3, a tablet PC) suggests an optical process.

• The Term: "metadata ... broadcasted together from the first source"

• Context and Importance: The relationship between the main content, the metadata, and the source is critical. Infringement will depend on whether Spotify's architecture involves broadcasting metadata with the main content stream from a single source, as opposed to a system where a user's client device separately requests control data or supplemental information.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent describes the "first source" broadly as a "television broadcaster, internet provider or any kind of source which is foreseen to transmit multimedia contents" (’542 Patent, col. 2:39-42), which could be argued to cover Spotify's servers.
  • Evidence for a Narrower Interpretation: The language "broadcasted together" suggests a tight, provider-side integration, akin to how teletext data is embedded in a television signal. A defendant may argue this does not read on a system where a user's control device (e.g., a phone) independently communicates with servers to manage playback on another device.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. It claims Defendant instructs customers on how to use its products in an infringing manner through its website (specifically referencing "https://connect.spotify.com/tv") and product instruction manuals (Compl. ¶¶10, 12).
• Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the patent "from at least the filing date of the lawsuit" (Compl. ¶¶10, 11, 12). The complaint does not allege pre-suit knowledge.

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

This dispute appears to center on whether the architecture of the accused Spotify service maps onto the specific method claimed in the ’542 patent. The resolution will likely depend on the court's claim construction and the technical evidence presented.

1. A core issue will be one of technical mechanism: Can the claim limitation requiring that metadata be forwarded "by scanning" be met by Spotify's network-based device-to-device communication protocol, or is it limited to the optical scanning of visual codes described as advantageous in the patent's specification?
2. A second key issue is one of system architecture: Does the Spotify service "broadcast" "metadata" together with its "main content" from a "first source," as required by the claims? Or does it operate as a user-initiated control system where data for a "second screen" experience is handled through separate communication channels that do not fit the patent's "broadcasting" model?
3. A final evidentiary question will be one of definitional components: In the accused system, what constitutes the "main content," the "metadata," and the "extra content," and can Plaintiff prove these components are sourced and handled in a manner that satisfies all limitations of the asserted claims, particularly the requirement for different first and second sources?