DCT

2:18-cv-00502

Uniloc 2017 LLC v. Google LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-00502, E.D. Tex., 11/17/2018
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Google maintains a "regular and established place of business" in the district. This is primarily based on Google-owned Google Global Cache (GGC) servers physically located within ISP facilities in Sherman, Tyler, and Texarkana, as well as the provision of other services like Google Fi cellular coverage in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s video streaming platforms (Google Play, YouTube, and YouTube TV) infringe a patent related to methods for tracking user viewing progress in digital media presentations.
  • Technical Context: The technology concerns the backend architecture for modern video-on-demand services, specifically the ability of a service provider to monitor user engagement with content that is streamed from a separate Content Delivery Network (CDN).
  • Key Procedural History: The complaint alleges that Google was on notice of the patent-in-suit as early as 2013, when it was cited during the prosecution of a Google patent application. Subsequent to the filing of this complaint, the patent-in-suit, U.S. Patent No. 8,407,609, was the subject of Inter Partes Review (IPR) proceedings before the U.S. Patent and Trademark Office. An IPR certificate issued on September 20, 2021, cancelled all claims of the patent (Claims 1-3).

Case Timeline

Date Event
2008-08-21 '609 Patent Priority Date
2013-03-26 '609 Patent Issue Date
2018-11-17 Complaint Filing Date
2021-09-20 '609 Patent IPR Certificate Issued (Claims 1-3 Cancelled)

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

U.S. Patent No. 8,407,609 - "SYSTEM AND METHOD FOR PROVIDING AND TRACKING THE PROVISION OF AUDIO AND VISUAL PRESENTATIONS VIA A COMPUTER NETWORK", Issued March 26, 2013

The Invention Explained

  • Problem Addressed: The patent addresses the need for a system that can track user interaction with digital media in a distributed network environment ('609 Patent, col. 2:5-9, col. 11:42-55). This is particularly relevant where the user-facing website is hosted on one server system, but the actual media content is delivered from a different server system, such as a third-party Content Delivery Network (CDN).
  • The Patented Solution: The invention describes a method where a "first computer system" (e.g., a web server) provides a user with a webpage and a timer "applet." This applet periodically signals the first system, transmitting identifier data. This allows the first system to track how long a user has been watching a media presentation, even though the presentation itself is being streamed from a "second," distinct computer system (e.g., a CDN). The patent’s Figure 10 illustrates this process of loading a page, checking for an elapsed time period, and transmitting data ('609 Patent, Abstract; Fig. 10).
  • Technical Importance: This architecture allows a service provider to gather detailed user engagement analytics (like watch time) and enable features like "resume watching," which are critical for advertising and user experience, without needing to control the content streaming infrastructure directly ('609 Patent, col. 14:1-9).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶98).
  • The essential elements of independent Claim 1 include:
    • Providing a webpage and identifier data from a "first computer system".
    • Providing an "applet" that operates as a "timer" on the user's computer.
    • The "first computer system" receiving the identifier data from the user's computer each time a "predetermined temporal period elapses."
    • Storing data that is indicative of the received identifier data.
    • Wherein the media is streamed from a "second computer system" that is "distinct" from the first.
    • Wherein the stored data indicates the amount of time the media was streamed and the cumulative time the webpage was displayed.
  • The patent contains only three claims in total (1-3), all of which were cancelled in a subsequent IPR proceeding ('609 Patent, IPR Certificate).

III. The Accused Instrumentality

Product Identification

The complaint names "mobile phones under the trade name 'Play,' 'YouTube,' and 'YouTube TV'" as the "Accused Infringing Devices" (Compl. ¶83). This refers to the services as accessed on various devices.

Functionality and Market Context

  • The complaint alleges these Google services track digital media presentations, identifying the content a user is watching and tracking their viewing progress (Compl. ¶84).
  • A core accused feature is the ability for a user to stop watching a video, close the webpage, and later return to have the video resume at or near the point where it was left (Compl. ¶88). This is evidenced by a screenshot of YouTube TV's "RESUME WATCHING" interface, which displays partially watched shows with progress bars. (Compl. ¶31, p. 31).
  • The complaint asserts the commercial importance of these services by citing their large user bases (Compl. ¶13).

IV. Analysis of Infringement Allegations

'609 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
providing a corresponding web page to the user's computer for each digital media presentation to be delivered using the first computer system; Google provides webpages via URLs (e.g., youtube.com) that serve as the interface for accessing and playing media content. ¶85 col. 12:15-17
providing identifier data to the user's computer using the first computer system; Google provides identifier data by allowing users to create accounts, which enables the tracking of viewing history across devices. ¶86 col. 12:17-19
providing an applet to the user's computer for each digital media presentation... wherein the applet is operative by the user's computer as a timer; The services allegedly provide a script that runs in the background to track watch time, which the complaint claims reflects the operation of a timer. ¶87 col. 12:20-24
receiving at least a portion of the identifier data from the user's computer responsively to the timer applet each time a predetermined temporal period elapses...; The user's computer allegedly sends periodic updates ("a heartbeat") to Google's servers, informing them of the current viewing position, which allows for the "resume watching" functionality. ¶88, ¶95 col. 12:24-28
storing data indicative of the received at least portion of the identifier data using the first computer system; Google stores the viewing history for each user, which is reflected in the "Continue" or "Resume Watching" pages that show updated progress bars for partially viewed content. ¶95, ¶98 col. 12:28-29
wherein each provided webpage causes corresponding digital media presentation data to be streamed from a second computer system distinct from the first computer system...; The complaint alleges the webpage is served from a primary domain (e.g., youtube.com) while the video is streamed from a distinct content delivery network (e.g., googlevideo.com), as shown in a provided network analysis screenshot. ¶96, p. 39 col. 12:30-34
wherein the stored data is indicative of an amount of time the digital media presentation data is streamed from the second computer system...; The stored viewing position and duration data allegedly indicates the amount of time the content was streamed to the user from the CDN. ¶97 col. 12:35-39
and wherein each stored data is together indicative of a cumulative time the corresponding web page was displayed by the user's computer. The tracked user viewing time is alleged to reflect the cumulative time the webpage containing the video player was displayed by the user's computer. ¶98 col. 14:46-49

Identified Points of Contention

  • Scope Questions: A central question is whether the term "applet," as used in the patent, can be construed to read on the modern JavaScript code used in the accused services. The defense could argue "applet" implies a specific technology (e.g., a Java Applet) common at the time of invention, whereas the plaintiff would likely argue for a broader, functional definition.
  • Technical Questions: The complaint alleges the existence of a timer-based "heartbeat" that sends periodic updates, but the evidence provided is the "resume watching" feature itself. A key evidentiary question is whether the accused systems operate on a "predetermined temporal period" as claimed, or if viewing position updates are triggered by other events (e.g., user pausing, browser closing). The provided Firefox Developer Tool screenshot shows network traffic between youtube.com and googlevideo.com, supporting the "distinct systems" theory (Compl. p. 39).

V. Key Claim Terms for Construction

The Term: "applet"

  • Context and Importance: The construction of this term is critical, as it determines whether the claim covers the technology used by the accused services. Practitioners may focus on this term because its common meaning has shifted since the patent's 2008 priority date.
  • Intrinsic Evidence for a Broader Interpretation: The specification provides a functional definition: "a software component that runs in the context of another program... to perform a specific function or task, usually narrow in scope" ('609 Patent, col. 13:1-5). This could support an interpretation covering a JavaScript snippet performing a tracking function.
  • Intrinsic Evidence for a Narrower Interpretation: The patent was filed when "applet" was strongly associated with self-contained, compiled programs like Java Applets that ran in a browser plug-in. The specification also discusses "browser plug-in applications" separately, which could be used to argue that an "applet" is a distinct type of technology ('609 Patent, col. 3:51).

The Term: "first computer system" / "second computer system"

  • Context and Importance: The claim requires these two systems to be "distinct." The infringement theory depends on establishing that the web server (e.g., youtube.com) and the content delivery network (e.g., googlevideo.com) meet this requirement.
  • Intrinsic Evidence for a Broader Interpretation (Supporting Infringement): The patent distinguishes systems by function, referring to a "content or web server" and a "file server" ('609 Patent, col. 4:13-14). The complaint’s allegation that the user interface and media stream are served from different domains (youtube.com vs. googlevideo.com) provides factual support for them being functionally distinct systems (Compl. ¶96).
  • Intrinsic Evidence for a Narrower Interpretation (Challenging Infringement): A defendant could argue that because both the web servers and the CDN are owned and operated by Google as part of a single service, they are not truly "distinct" in the manner contemplated by the patent, which illustrates separate entities connected by a network ('609 Patent, Fig. 1).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement allegation is based on Google providing instructions and user guides that allegedly encourage use of the services in an infringing manner (Compl. ¶99). The contributory infringement allegation is based on Google providing the services as a non-staple component especially adapted for infringing the patent (Compl. ¶100).
  • Willful Infringement: The complaint alleges willfulness based on pre-suit knowledge, asserting that the '609 Patent was cited against a Google patent application in 2013 (Compl. ¶101). It also alleges ongoing knowledge from the date of service of the complaint (Compl. ¶102).

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

  • The dispositive issue for this case is one of legal viability: given that all claims of the '609 Patent were cancelled in an Inter Partes Review after this complaint was filed, can the infringement action be maintained? Barring a successful appeal of the cancellation, the invalidity of the asserted patent claims would render the infringement allegations moot.
  • A key technical question would have been one of definitional scope: can the 2008-era patent term "applet" be construed to cover the modern, dynamic JavaScript used by the accused Google services, or is it limited to a narrower, now-obsolete technology?
  • A central factual question for infringement would have been one of system architecture: do Google’s user-facing web servers and its internal content delivery network constitute "distinct" computer systems as required by Claim 1, or are they integrated components of a single, unified system falling outside the claim's scope?