DCT
2:16-cv-01129
Bartonfalls LLC v. CBS Interactive Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bartonfalls LLC (Texas)
- Defendant: CBS Interactive Inc. (New York)
- Plaintiff’s Counsel: Zimmerman & Paray LLP
- Case Identification: 2:16-cv-01129, E.D. Tex., 10/11/2016
- Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business and commits alleged acts of infringement in the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s CNET website, by automatically playing sequential videos, infringes a patent related to automatically switching television programs.
- Technical Context: The technology concerns the integration of multiple video signal sources and a method for automatically transitioning a viewer from a primary program to a related secondary program.
- Key Procedural History: The patent-in-suit was originally assigned by the inventors to Videa LLC in March 2014 and subsequently assigned to Plaintiff Bartonfalls LLC in June 2016, approximately four months before the complaint was filed.
Case Timeline
| Date | Event |
|---|---|
| 1995-06-08 | ’922 Patent Priority Date |
| 2011-03-29 | ’922 Patent Issue Date |
| 2014-03-28 | Inventors assign ’922 Patent to Videa LLC |
| 2016-06-10 | Videa LLC assigns ’922 Patent to Plaintiff Bartonfalls LLC |
| 2016-10-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 7,917,922, "Video Input Switching and Signal Processing Apparatus", issued March 29, 2011.
The Invention Explained
- Problem Addressed: The patent describes the "complicated wiring requirements" and "confusion" faced by consumers trying to integrate multiple television signal sources, such as broadcast antennas, cable boxes, and satellite receivers, into a single system (’922 Patent, col. 1:15-28).
- The Patented Solution: The invention proposes an apparatus to integrate these disparate sources and a method for enhancing the viewing experience by linking a "primary channel" to one or more "secondary channels" that carry supplemental, related content (’922 Patent, Abstract; col. 2:50-54). A key aspect is the use of a "pointer" transmitted with the primary program, which, in conjunction with a user's pre-entered viewing preference, allows the system to automatically switch to the related program on the alternate channel without requiring user action at the moment of the switch (’922 Patent, col. 3:30-46).
- Technical Importance: The technology aimed to simplify the user experience and enable new content delivery methods in an era of proliferating, but not yet seamlessly integrated, home video technologies. (’922 Patent, col. 1:15-33).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-8 (Compl. ¶8-15, 21).
- Independent Claim 1 of the ’922 Patent recites the following essential elements:
- entering, at the viewer location, information regarding a viewing preference;
- transmitting a TV program from a source to a viewer location;
- receiving the TV program at the viewer location over a first TV channel, the TV program including a pointer to an alternate TV channel providing an alternate TV program with subject matter directly related to the first TV program; and
- automatically switching the TV program to the alternate TV program using the pointer and the information previously entered by the viewer without requiring any additional viewer intervention at the time of the switching.
- The complaint reserves the right to assert other claims (Compl. ¶31).
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused instrumentality as a "method for automatically changing from a first TV program to an alternate TV program" as practiced on Defendant's CNET website (Compl. ¶16-17).
Functionality and Market Context
The complaint alleges that the CNET website, which publishes technology news and video reviews, implements the infringing method (Compl. ¶17-18). The specific functionality cited is the website's video player automatically transitioning from one video (e.g., "Jet black iPhone 7 vs. matte black iPhone 7 Plus") to a subsequent, related video (e.g., "iPhone 7 packed with new features") after the first one concludes (Compl. ¶17).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint does not provide sufficient detail for analysis of how the accused instrumentality meets the "entering... information regarding a viewing preference" limitation.
’922 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| entering, at the viewer location, information regarding a viewing preference; | The complaint does not specify what user action or system function constitutes entering a viewing preference. | ¶8 | col. 4:31-33 |
| transmitting a TV program from a source to a viewer location; | CBS transmits video content from its servers for display on a user's device via the CNET website. | ¶17 | col. 4:34-35 |
| receiving the TV program at the viewer location over a first TV channel, the TV program including a pointer to an alternate TV channel providing an alternate TV program with subject matter directly related to the first TV program; | A user's device receives and plays a first video on the CNET website. This video allegedly includes a "pointer" that directs the player to a subsequent, related video. | ¶17 | col. 4:36-41 |
| and automatically switching the TV program to the alternate TV program using the pointer and the information previously entered by the viewer without requiring any additional viewer intervention at the time of the switching. | The CNET video player automatically plays the subsequent video after the first video finishes. | ¶17 | col. 4:42-46 |
- Identified Points of Contention:
- Scope Questions: A central issue will be whether the terms "TV program" and "TV channel," as used in the patent, can be construed to read on internet-based video streams and webpages. The patent's specification consistently discusses these terms in the context of broadcast, cable, and satellite tuners (’922 Patent, Fig. 1; col. 2:18-28), which raises the question of a potential scope mismatch with the accused web-based system.
- Technical Questions: The complaint does not identify the specific technical mechanism within the CNET website that allegedly functions as the claimed "pointer." Further, it fails to plead any facts explaining what act constitutes "entering... information regarding a viewing preference," which is a required step of the asserted method claim.
V. Key Claim Terms for Construction
The Term: "pointer"
- Context and Importance: This term defines the core technical mechanism that enables the claimed automatic switching. The infringement case depends on whether the auto-play function on the CNET website is driven by a "pointer" within the meaning of the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the pointer may be carried "in a subcarrier, or as part of synchronization as during vertical retrace," which a party could argue are merely examples of any data linking one program to another (’922 Patent, col. 3:12-14).
- Evidence for a Narrower Interpretation: The context describes the pointer as being carried by a "primary channel," suggesting it is a specific data element embedded within a traditional television signal, not a hyperlink or playlist data on a website (’922 Patent, col. 3:11-12).
The Term: "TV channel"
- Context and Importance: The claim requires receiving a program on a "first TV channel" and switching to an "alternate TV channel." The applicability of the patent to the accused website hinges on whether a webpage or video stream can be considered a "TV channel."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that in a modern context, any distinct stream of video content functions as a "channel."
- Evidence for a Narrower Interpretation: The specification extensively details an environment of "broadcast tuner," "cable tuner," and "satellite tuner" (’922 Patent, Fig. 1), and discusses reassigning "broadcast channels 2, 4, and 7," strongly suggesting the term is limited to the conventional broadcast television context (’922 Patent, col. 4:11-12).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that CBS induces infringement by encouraging and instructing the public to use the CNET website's video player (Compl. ¶31). It also alleges contributory infringement, claiming the accused method has no substantial non-infringing use (Compl. ¶32). These allegations are not supported by specific factual pleadings beyond the general operation of the website.
- Willful Infringement: Willfulness is alleged based on Defendant's continuation of the accused activity after the filing of the complaint, thereby establishing knowledge of the patent as of that date (Compl. ¶24).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can terms such as "TV channel" and "pointer", which are rooted in the patent's 1990s-era context of integrating broadcast, cable, and satellite hardware, be construed to cover the functionally different environment of a modern, web-based video playlist and its auto-play feature?
- A key evidentiary question will be one of factual sufficiency: the complaint does not appear to plead facts that would satisfy all elements of the asserted claim, most notably the required step of a user "entering... information regarding a viewing preference." The viability of the infringement claim will depend on whether discovery can uncover evidence of this and other thinly-pled elements, such as the specific "pointer" mechanism.