1:25-cv-02158
Audible Inc v. Audio Pod IP LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Audible, Inc. (Delaware)
- Defendant: Audio Pod IP, LLC (Virginia)
- Plaintiff’s Counsel: Knobbe, Martens, Olson & Bear, LLP
- Case Identification: 1:25-cv-02158, S.D.N.Y., 03/14/2025
- Venue Allegations: Plaintiff Audible alleges venue is proper because Defendant Audio Pod purposefully availed itself of New York's financial markets to obtain litigation funding from HPCF Litigation Finance, which is allegedly managed by and operates from the Manhattan office of a New York-based hedge fund, Davidson Kempner Capital Management.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Audible and Audible Library" services do not infringe six patents owned by Defendant related to the transmission, rendering, and synchronization of digital audio data.
- Technical Context: The technology concerns systems for efficiently delivering large media files, such as audiobooks, by segmenting them into smaller files and using descriptor files to manage playback and synchronize different media types.
- Key Procedural History: This action follows two prior lawsuits filed by Audio Pod against Audible in the Eastern District of Virginia (EDVA) asserting the same patents. One of those prior cases was dismissed for improper venue, and a motion to dismiss on the same grounds is pending in the other, prompting Audible to file this pre-emptive action in its preferred New York forum.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-13 | Earliest Priority Date for all Asserted Patents |
| 2014-05-27 | U.S. Patent No. 8,738,740 Issues |
| 2016-04-19 | U.S. Patent No. 9,319,720 Issues |
| 2017-08-08 | U.S. Patent No. 9,729,907 Issues |
| 2018-04-24 | U.S. Patent No. 9,954,922 Issues |
| 2018-10-02 | U.S. Patent No. 10,091,266 Issues |
| 2020-10-13 | U.S. Patent No. 10,805,111 Issues |
| 2024-03-20 | Audio Pod files first infringement suit against Audible in E.D. Va. |
| 2024-05-30 | Audio Pod files second infringement suit against Audible in E.D. Va. |
| 2025-03-03 | E.D. Va. court dismisses one action against Audible for improper venue |
| 2025-03-14 | Audible files this Complaint for Declaratory Judgment in S.D.N.Y. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,738,740 - “Transmission of digital audio data”
Issued May 27, 2014
The Invention Explained
- Problem Addressed: The patent addresses the challenge of delivering large digital audio streams, like audiobooks, to users. Traditional "mass download" methods result in long wait times before playback can begin, while "just-in-time" streaming can suffer from interruptions and inefficient repositioning (e.g., rewind/fast-forward) because the data is not stored locally. (’266 Patent, col. 1:28-67).
- The Patented Solution: The invention segments a large audio stream into a plurality of smaller, more manageable digital audio files. Instead of reassembling the entire stream on the client device, the system uses a "virtual audio stream descriptor," which is an index file containing metadata about the segments (e.g., their order, start times, end times). This descriptor allows a media player to play the small files sequentially in a way that appears seamless to the user, providing timely, on-demand playback without the drawbacks of prior methods. (’266 Patent, col. 2:41-65).
- Technical Importance: This approach sought to combine the on-demand benefits of streaming with the stability of local playback by creating a hybrid method for handling large media files. (’266 Patent, col. 2:41-57).
Key Claims at a Glance
- The complaint asserts non-infringement of independent claim 12. (Compl. ¶39).
- Essential elements of claim 12 include:
- Creating a bookmark for a first position in an audio stream, the bookmark including a file with a unique identifier and a time offset.
- Wherein the audio stream is stored as a plurality of digital audio files in a library.
- Determining a first digital audio file to be loaded for playback from the first position.
- Selecting the first digital audio file using the time offset and a descriptor file, where the descriptor file orders the plurality of files and includes timing information for each file.
U.S. Patent No. 9,319,720 - “System and method for rendering digital content using time offsets”
Issued April 19, 2016
The Invention Explained
- Problem Addressed: The patent identifies tracking problems when users consume media across different formats (e.g., listening to an audiobook, then reading the corresponding e-text) or on multiple devices. Aligning the user's position between different media types can be difficult and time-consuming. (’111 Patent, col. 2:38-51).
- The Patented Solution: The invention uses a universal "descriptor file" that defines multiple media streams (e.g., audio, text, images) derived from a single "originating written work." All streams are mapped to a common timeline based on a complete audio recording of the work. By using "time offsets" relative to this master timeline, the system can synchronize the rendering of different media streams, allowing for a seamless transition between, for example, listening to an audio track and reading the corresponding text. (’111 Patent, col. 3:4-21).
- Technical Importance: This method provides a framework for creating multi-modal literary experiences, such as synchronized audio narration and text highlighting, by mapping different content types to a common time-based coordinate system. (’111 Patent, col. 21:1-4).
Key Claims at a Glance
- The complaint asserts non-infringement of independent claim 1. (Compl. ¶46).
- Essential elements of claim 1 include:
- Providing a media player with access to a server storing a descriptor file and a plurality of media streams derived from the same originating written work.
- The descriptor file includes information for simultaneous, synchronized rendering of the media streams, with time information determined relative to a timeline of an audio recording.
- Determining a first digital data file to be rendered using the time information in the descriptor file and a predetermined time offset that is external to the descriptor file.
- Downloading the determined file and rendering the content.
U.S. Patent No. 9,729,907 - “Synchronizing a plurality of digital media streams by using a descriptor file”
Issued August 8, 2017
Technology Synopsis
This patent focuses on the creation and use of a "descriptor file" to synchronize multiple media streams. The method involves identifying time offsets in a primary digital audio narration, correlating them with "content points," and then mapping those to "synchronization points" in other media streams to allow for synchronized rendering on a client device. (Compl. ¶55).
Asserted Claims
Independent claim 1 is asserted. (Compl. ¶53).
Accused Features
Audible's services are alleged not to perform the claimed steps of identifying and storing pluralities of time offsets, content points, and synchronization points in a descriptor file in the specifically claimed manner. (Compl. ¶55).
U.S. Patent No. 9,954,922 - “Method and system for rendering digital content across multiple client devices”
Issued April 24, 2018
Technology Synopsis
This patent describes a method for managing digital content across multiple devices, focusing on memory management. It claims downloading content to a second device that includes a bookmarked position, and then determining storage availability and potentially "narrowing the range of content surrounding the bookmarked position" if storage is insufficient. (Compl. ¶62).
Asserted Claims
Independent claim 1 is asserted. (Compl. ¶60).
Accused Features
Audible's services are alleged not to perform the claimed steps of downloading content with a bookmarked position and then making storage determinations to narrow the content range. (Compl. ¶62).
U.S. Patent No. 10,091,266 - “Method and system for rendering digital content across multiple client devices”
Issued October 2, 2018
Technology Synopsis
This patent relates to transferring a listening session between devices. The method involves transferring an identifier and a "first position" from a first device to a second device via a network library, downloading a descriptor to the second device, and rendering ancillary "secondary digital content" on the second device simultaneously and in synchronization with "primary digital content" on the first client device. (Compl. ¶69).
Asserted Claims
Independent claim 1 is asserted. (Compl. ¶67).
Accused Features
Audible's services are alleged not to perform the claimed steps of transferring an identifier and position between devices for synchronized, simultaneous rendering of primary and secondary content across two different devices. (Compl. ¶69).
U.S. Patent No. 10,805,111 - “Simultaneously rendering an image stream of static graphic images and a corresponding audio stream”
Issued October 13, 2020
Technology Synopsis
This patent covers a method for synchronizing a stream of static images with an audio stream. The method involves downloading images that are each associated with time information relative to the audio stream's timeline, assigning time information to a "first page" composed of one or more images, and then simultaneously rendering the page and a portion of the audio stream using a "first time offset." (Compl. ¶76).
Asserted Claims
Independent claim 1 is asserted. (Compl. ¶74).
Accused Features
Audible's services are alleged not to perform the claimed steps of downloading static images with specific time information, assigning time information to a page, and simultaneously rendering the page and audio based on a time offset. (Compl. ¶76).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Plaintiff's "Audible and Audible Library" services. (Compl. ¶25).
Functionality and Market Context
The complaint describes Audible as a "leading producer and provider of audio storytelling," offering audiobooks, podcasts, and original works. (Compl. ¶24). It does not provide specific technical details about the architecture or operation of the accused services, as the complaint's purpose is to seek a judgment of non-infringement rather than to prove infringement.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’740 Patent Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| create a bookmark for the first position, the bookmark including a file, the file including a unique identifier for identifying the audio stream and including the time offset | The complaint alleges that Audible's Services do not create a bookmark that includes a separate file with the claimed structure. | ¶41a | col. 8:4-16 |
| wherein the audio stream is stored as a plurality of digital audio files in a library, each digital audio file including a different segment of the audio stream | The complaint alleges that Audible's Services do not store the audio stream as a plurality of distinct digital audio files each containing a different segment. | ¶41b | col. 4:28-34 |
| determine a first digital audio file from the plurality of digital audio files to be loaded for playback...the first digital audio file selected using the time offset and a descriptor file | The complaint alleges that Audible's Services do not use a time offset and a descriptor file with the claimed structure to determine which digital audio file to load for playback. | ¶41c | col. 4:53-65 |
- Identified Points of Contention:
- Structural Questions: A central dispute will likely involve the specific data structures required by the claims. The complaint suggests that Audible's system does not use a separate "file" for its bookmarks or a "descriptor file" with the exact structure and content (e.g., start/end times for each segment) recited in the claim. (Compl. ¶41). This raises the question of whether Audible's implementation, even if functionally similar, meets these specific structural limitations.
- Scope Questions: The analysis may turn on the construction of "bookmark including a file." The court will need to determine if this requires a standalone data file as Audible seems to imply, or if it could be read more broadly to cover bookmark data that is stored in a database or as part of a larger user profile file.
’720 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a media player having access to at least one server...the at least one server having stored thereon a descriptor file and a plurality of media streams derived from a same originating written work | The complaint alleges that Audible's Services do not provide a media player with access to a server having the specifically claimed combination of a descriptor file and multiple media streams derived from the same work. | ¶48a | col. 32:22-34 |
| determining a first digital data file...determined using the time information in the descriptor file and a predetermined time offset, the predetermined time offset external to the descriptor file | The complaint alleges that Audible's Services do not determine the file for playback by using both time information from a descriptor file and a time offset that is "external" to that descriptor file. | ¶48b | col. 32:35-43 |
- Identified Points of Contention:
- Technical Questions: The dispute may focus on the term "predetermined time offset external to the descriptor file." This raises the evidentiary question of how Audible's system calculates and stores its timing and offset information. The key issue will be whether the offset used by Audible is truly "external" to its metadata/descriptor files, or if it is integrated in a manner that falls outside the claim's scope.
- Functional Questions: The complaint questions whether Audible's system performs the claimed function of "simultaneous synchronized rendering" using the specific inputs required by the claim (i.e., information from a descriptor file plus an external offset). (Compl. ¶48a). The analysis will require a detailed technical comparison of the patented method and the actual operation of Audible's services.
V. Key Claim Terms for Construction
The Term: "descriptor file" (’740 Patent, Claim 12; ’720 Patent, Claim 1)
- Context and Importance: This term appears in the independent claims of multiple asserted patents and is fundamental to the patented solution of managing and synchronizing segmented media. Its construction will be critical, as Audible's non-infringement position appears to hinge on its argument that its services do not use a "descriptor file" with the specific structure and content required by the patents. (Compl. ¶41c, ¶48a).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves define the descriptor file functionally as including "information allowing a simultaneous synchronized rendering" and "time information for each digital data file." (’720 Patent, Claim 1). A party could argue any file that performs this function meets the definition.
- Evidence for a Narrower Interpretation: The specification describes the descriptor file (also called an index file or virtual audio stream descriptor) with significant particularity, stating it is an "XML document" that "includes a record of the position of each small digital audio file in the audio stream." (’266 Patent, col. 2:58-61). This detailed embodiment could be used to argue for a narrower construction limited to such specific structures.
The Term: "predetermined time offset external to the descriptor file" (’720 Patent, Claim 1)
- Context and Importance: The requirement that the time offset be "external" to the descriptor file appears to be a key limitation that Audible alleges its services do not meet. (Compl. ¶48b). The case may turn on whether the offset used by Audible's system is integrated with its metadata files in a way that cannot be considered "external."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "external." A party might argue that any offset not literally contained within the text of the descriptor file itself is "external," even if it is stored on the same server or retrieved in the same data call.
- Evidence for a Narrower Interpretation: The specification contrasts "internal media marks" (which are part of the descriptor) with "external media marks" like bookmarks, which are created by the client and stored separately. (’266 Patent, col. 8:51-54). This distinction suggests "external" implies a data object that is separate in origin and/or storage from the descriptor file itself.
VI. Other Allegations
The complaint seeks a declaration of non-infringement and does not contain affirmative allegations of indirect or willful infringement. It requests attorneys' fees under 35 U.S.C. § 285, but provides no specific factual basis for why the case should be deemed exceptional beyond the prior litigation history. (Compl., Prayer ¶C).
VII. Analyst’s Conclusion: Key Questions for the Case
- Procedural Posture: The primary non-technical question is one of forum. Will Audible's novel venue argument, based on Audio Pod's alleged use of New York litigation financing, be sufficient to keep the case in the Southern District of New York, or will the dispute be sent back to the Eastern District of Virginia where Audio Pod initially filed suit?
- Definitional Scope: A core technical issue will be one of claim construction. Can the term "descriptor file," which the specification describes as a specific XML document, be construed broadly enough to read on the metadata architecture used by Audible's services, or is there a fundamental structural mismatch?
- Architectural Equivalence: A key evidentiary question will be one of technical operation. Does Audible's system for bookmarking and synchronizing content use an architecture where timing and offset data is truly "external to the descriptor file," as required by Claim 1 of the ’720 patent, or are these data points integrated in a manner that avoids infringement?