DCT
2:18-cv-00146
Kojicast LLC v. Dailymotion SA
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kojicast, LLC (Texas)
- Defendant: Dailymotion S.A. (France)
- Plaintiff’s Counsel: ETHERIDGE LAW GROUP, Group
- Case Identification: 2:18-cv-00146, E.D. Tex., 11/06/2018
- Venue Allegations: Venue is asserted on the basis that Defendant is not a resident of the United States and may therefore be sued in any judicial district. The complaint also alleges that Defendant has committed acts of infringement and transacted business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Dailymotion video delivery platform and its "casting" features infringe a patent related to methods for managing and switching media streaming between a mobile device and a separate media playback device.
- Technical Context: The technology concerns the coordination of streaming media between a server, a mobile device, and a playback device (e.g., a smart TV), a functionality now commonly known as "media casting."
- Key Procedural History: This First Amended Complaint was filed following prior proceedings in the case. The complaint dedicates substantial argument to the patent's prosecution history, noting the inventor acted pro-se, amended the claims in response to an initial rejection, and ultimately secured the patent after examination against more than seventy prior art references and post-dating the Supreme Court's Alice decision on patent eligibility.
Case Timeline
| Date | Event |
|---|---|
| 2005-04-01 | Dailymotion uploads its first video (context) |
| 2012-03-05 | ’683 Patent Priority Date |
| 2013-07-01 | Google announces Chromecast (context) |
| 2015-04-29 | ’683 Patent Issue Date |
| 2015-05-01 | Dailymotion announces availability on Chromecast |
| 2018-11-06 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,037,683 - "MEDIA ASSET STREAMING OVER NETWORK TO DEVICES"
- Patent Identification: U.S. Patent No. 9,037,683, titled "MEDIA ASSET STREAMING OVER NETWORK TO DEVICES," issued on April 29, 2015 (’683 Patent).
The Invention Explained
- Problem Addressed: The patent addresses the cumbersome and disjointed user experience of switching media playback from a portable device with a small screen to a remote appliance with a better display, such as a television (Compl. ¶¶12-13; ’683 Patent, col. 1:32-44). Conventionally, this required a user to stop playback on one device, manually launch a separate application on the second device, and then relocate the same content and playback position (Compl. ¶13).
- The Patented Solution: The invention describes a three-part system (mobile device, server, media playback device) where the mobile device acts as a remote control to manage streaming (Compl. ¶14). A user can select a media playback device (e.g., a TV) from the mobile device's interface. In response, a server streams the media content directly to the selected playback device while simultaneously sending "progress information" to the original mobile device, which retains control and displays the playback status (Compl. ¶15; ’683 Patent, FIG. 15). This architecture allows for seamless switching of the streaming destination between devices, controlled from the mobile phone (Compl. ¶16).
- Technical Importance: The technology aimed to unify the media consumption experience across multiple devices, a concept now widely implemented in the industry as "media casting" (Compl. ¶18).
Key Claims at a Glance
- The complaint asserts independent claims 1, 9, and 16, as well as several dependent claims (Compl. ¶85).
- Independent Claim 1 (Method): The essential elements are:
- Providing a database that associates a mobile device with one or more media playback devices using discrete IP addresses.
- Listing media thumbnails from a server on the mobile device's graphical user interface (GUI).
- Determining a streaming destination (the mobile device or a playback device) based on a user's selection of a thumbnail.
- If a playback device is chosen, streaming media content from the server to that device while in parallel streaming progress information from the server to the mobile device.
- Displaying the progress information on the mobile device's GUI while the media plays on the separate playback device.
- Independent Claim 9 (Computer Product): This claim mirrors the method of claim 1 but is framed as a computer program product for a mobile device. A key distinction is that the mobile device performs operations that request the server to direct streaming to the appropriate destination, rather than performing the streaming itself (Compl. ¶70).
- The complaint reserves the right to assert other claims, including dependent claims 2-3, 6-7, 12-13, and 17 (Compl. ¶85).
III. The Accused Instrumentality
Product Identification
- The "Dailymotion" video delivery platform, which includes mobile applications for Apple iOS and Android operating systems (Compl. ¶84).
Functionality and Market Context
- The accused functionality is the Dailymotion platform's "casting" feature. This enables a user to initiate playback on a mobile device and then transfer, or "cast," the video stream to another device, such as a Chromecast-enabled television, for viewing (Compl. ¶84). The complaint alleges that Dailymotion enabled these "switched streaming features" around May 2015, which required modifications to its servers and mobile applications (Compl. ¶35).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not provide a detailed, element-by-element infringement analysis. The following chart summarizes the infringement theory based on the complaint's general description of the accused functionality.
’683 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing, in a computer-readable medium, a database associating a mobile device with one or more media playback devices, wherein the mobile device and the media playback devices are identified by discrete IP addresses on the Internet | The Dailymotion mobile app discovers and maintains a list of available playback devices (e.g., Chromecasts) on a network, each identified by a unique IP address. | ¶29, ¶84 | col. 47:58-63 |
| listing thumbnails of media contents stored on a server, on a graphical user interface of the mobile device... | The Dailymotion app displays a browsable list of video thumbnails hosted on Dailymotion's servers. | ¶84 | col. 48:1-6 |
| in response to a first user input on the graphical user interface, determining one of the mobile device and the media playback devices as a streaming destination with reference to the database... | A user selects a video and then chooses a streaming destination, either the mobile device itself or a "casted" device from the list of available playback devices. | ¶15, ¶84 | col. 48:7-12 |
| (b) upon determining one of the media playback devices to be the streaming destination, streaming the media content...from the server to the determined media playback device...while streaming progress information from the server to the mobile device in parallel... | When a user "casts" a video, Dailymotion's servers stream the video content to the selected playback device while the mobile app receives progress/status updates to maintain control of the session. | ¶15, ¶27, ¶55 | col. 48:16-26 |
| (b) displaying the progress on the graphical user interface of the mobile device based on the progress information while playing back the streamed media content at the media playback device... | The Dailymotion mobile app displays a progress bar and playback controls that reflect the status of the video playing on the separate playback device. | ¶15, ¶27 | col. 48:29-32 |
Identified Points of Contention
- Scope Questions: The complaint appears to anticipate a challenge under 35 U.S.C. § 101, dedicating significant analysis to arguing that the claims are not directed to an abstract idea but to a specific improvement in computer functionality (Compl. ¶¶36-57). A central question for the court will be whether the claims recite a patent-eligible technological solution or an abstract process implemented on generic hardware.
- Technical Questions: A potential point of dispute concerns the "streaming progress information from the server to the mobile device" limitation. The infringement analysis may turn on whether the Dailymotion system's architecture matches this specific data flow. It raises the question of what evidence the complaint provides that progress information originates from Dailymotion's server and is streamed to the mobile device, as opposed to being relayed from the playback device (e.g., Chromecast) back to the mobile app, which could represent a material difference from the claimed method.
V. Key Claim Terms for Construction
"streaming progress information from the server to the mobile device in parallel"
- Context and Importance: This limitation defines a specific three-way communication architecture (server-to-playback device and server-to-mobile device). Its construction is critical because many casting systems may use an alternative architecture where the playback device communicates its status back to the mobile device directly or via the server. Infringement hinges on whether the accused system practices the specific server-centric data flow recited in the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "progress information" is not explicitly defined, which could support a construction covering any data related to playback status, regardless of its specific format or frequency. The patent states the cloud server "starts sending to the computing device 100 progress information indicative of progress of the streaming" (’683 Patent, col. 17:7-10).
- Evidence for a Narrower Interpretation: FIG. 15 explicitly illustrates "Start Sending Progress Info." (S2065) as a distinct step initiated by the "Cloud Server Computer 500" and directed to the "Computing Device 100," separate from the main media stream (’683 Patent, FIG. 15). A party could argue this requires a specific, server-initiated data stream to the mobile device, not just status updates relayed from another source.
"database associating a mobile device with one or more media playback devices"
- Context and Importance: The nature of this "database" is fundamental to the claimed method. Practitioners may focus on this term because its definition could distinguish between a formal, persistent registration of devices with a server versus a transient, ad-hoc list of devices discovered on a local network.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, requiring only "a database" in "a computer-readable medium" that performs the association (’683 Patent, col. 47:58-61). This could arguably cover a temporary data structure held in the mobile device's memory.
- Evidence for a Narrower Interpretation: The specification’s detailed embodiments illustrate a more formal system where users register devices with the cloud server, which then stores device names and IP addresses in a user data record (’683 Patent, FIG. 7, 601; FIG. 8D). This could support an argument that "database" implies a more structured and persistent record managed by the server, not just a temporary list of discovered devices.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement to infringe, asserting that Defendant provides instructional materials and user guides (with a hyperlink to a "Our-Video-Player" FAQ page) that instruct customers on how to use the infringing "casting" functionality (Compl. ¶87). It also pleads contributory infringement, alleging the Dailymotion system is a material component specially adapted for infringing use and not a staple article of commerce (Compl. ¶¶88-89).
- Willful Infringement: Willfulness is alleged based on post-suit knowledge. The complaint states that Defendant has been on notice of the ’683 Patent "since, at the latest, the service of the original complaint," and that its continued infringement is therefore willful (Compl. ¶90).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of patent eligibility: are the claims directed to a patent-eligible technological improvement that enhances computer functionality by creating a new mode of interaction between disparate devices, or do they simply recite the abstract idea of watching media on a different screen using conventional network components?
- A key evidentiary question will be one of architectural congruence: does the accused Dailymotion platform actually implement the specific server-to-mobile-device "progress information" data stream required by the claims, or does it utilize a different architecture for managing session state that falls outside the literal scope of the patent?
- A final question will concern claim construction: can the term "database" be construed broadly enough to read on the ad-hoc discovery of networked devices common in modern casting protocols, or does the patent’s specification limit the term to a more formal, server-side registration system?