DCT
2:23-cv-00388
Rich Media Club LLC v. DMG Media Ltd
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rich Media Club LLC (Florida)
- Defendant: DMG Media Limited (England)
- Plaintiff’s Counsel: Global IP Law Group, LLC
- Case Identification: 2:23-cv-00388, E.D. Tex., 01/26/2024
- Venue Allegations: Venue is alleged to be proper in any judicial district because the defendant is not a resident of the United States.
- Core Dispute: Plaintiff alleges that Defendant’s dailymail.co.uk website infringes three U.S. patents related to the dynamic display, replacement, and viewability tracking of online advertisements.
- Technical Context: The technology at issue addresses methods for managing digital advertising on websites to increase viewability and revenue, such as refreshing ads after a certain viewing time or ensuring ads that are quickly scrolled past remain visible.
- Key Procedural History: The complaint states that Plaintiff provided Defendant with pre-suit notice of infringement, including detailed claim charts, on May 17, 2023. It also references a prior court opinion in a related case where the patents were found to be subject-matter eligible under 35 U.S.C. § 101, and multiple PTAB decisions that found related patent applications patentable over § 101 rejections, potentially to preemptively counter eligibility challenges in this litigation.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-24 | Earliest Priority Date for ’329 and ’482 Patents |
| 2021-10-12 | Earliest Priority Date for ’115 Patent |
| 2022-09-13 | ’329 Patent Issued |
| 2023-04-18 | ’115 Patent Issued |
| 2023-05-17 | Plaintiff sends pre-suit notice letter to Defendant |
| 2023-08-29 | ’482 Patent Issued |
| 2024-01-26 | Plaintiff files First Amended Complaint |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,443,329 - "SYSTEM AND METHOD FOR CREATION, DISTRIBUTION AND TRACKING OF ADVERTISING VIA ELECTRONIC NETWORKS," Issued Sep. 13, 2022
The Invention Explained
- Problem Addressed: The patent addresses the technical challenge of "electronic advertising that was never actually displayed or seen by consumers," which represents an unresolved problem in internet advertising (Compl. ¶21).
- The Patented Solution: The invention describes a method where a system determines if a predefined advertisement area on a webpage is within the user's visible browser window. If the ad remains in view for a "predefined period of time," the system sends a communication to a "dispatcher server," which then selects and serves a "replacement advertisement" to that same area. This allows for the dynamic replacement of ads that have already been viewed for a set duration (’329 Patent, Abstract; col. 68:45-69:3).
- Technical Importance: This technology aims to increase the value of ad inventory by enabling publishers to serve multiple, fresh advertisements in a single ad slot during a single user session (Compl. ¶17).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 3, and 5 (Compl. ¶44).
- Independent Claim 1 requires:
- A method for determining whether a predefined ad area on a page is in view within a browser window.
- The ad page must also include separate page content distinct from the advertisement content.
- In response to the ad area being in view for a predefined period of time, a communication is sent to one or more dispatcher servers.
- The servers are configured to receive the communication, cause a replacement advertisement to be selected, and cause the replacement ad to be served to the remote device.
- The browser is configured to render the replacement advertisement in the predefined area.
U.S. Patent No. 11,631,115 - "AUTOMATED METHOD FOR DISPLAYING AD CONTENT WITHIN A WEB CONTENT PAGE AND SELECTIVELY ALLOWING THE AD CONTENT TO LINGER IN VIEW DURING VIEWING OF THE WEB CONTENT PAGE," Issued Apr. 18, 2023
The Invention Explained
- Problem Addressed: The patent's background section identifies a key problem in online advertising: a user may scroll down a webpage so quickly that an advertisement is not "in the viewport for a sufficient time period to make the expected viewable ad impression" (’115 Patent, col. 2:5-9).
- The Patented Solution: The invention proposes a method to counteract fast scrolling. It detects if an ad appears in and then disappears from the viewport in less than a predetermined minimum time. If this occurs, the ad content is "detached" from its original place in the scrolling webpage and repositioned in a fixed location within the viewport, causing it to "linger" on screen for an additional period to ensure it is viewed (’115 Patent, Abstract; col. 5:15-24).
- Technical Importance: This method directly addresses the economic problem of wasted ad impressions by enforcing a minimum view time, thereby increasing the reliability of advertising investments for brands (Compl. ¶17).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶57).
- Independent Claim 1 requires:
- Setting a predetermined minimum amount of time for an ad to appear in the viewport.
- Detecting when the ad initially appears in the viewport and when it no longer appears.
- Upon detecting the ad was not in view for the minimum time, the method performs two steps:
- (i) "detaching" the ad content from the web content page and its original placement area.
- (ii) "positioning" the detached ad content in a location within the viewport and maintaining it there for an additional amount of time, regardless of further page scrolling.
- The result is that the ad content "lingers" in the viewport despite its original placement area being scrolled out of view.
U.S. Patent No. 11,741,482 - "SYSTEM AND METHOD FOR CREATION, DISTRIBUTION AND TRACKING OF ADVERTISING VIA ELECTRONIC NETWORKS," Issued Aug. 29, 2023
Technology Synopsis
This patent addresses the technical problem of ad-serving latency, where an ad slot may become visible to a user before the ad content has finished loading. The patented solution is a "just-in-time" delivery method that first determines whether a predefined portion of an ad display area is visible in the browser window, and only then sends a communication to a server to serve the ad content for rendering in that area, ensuring the ad is not requested until it is about to be seen (’482 Patent, Abstract; col. 60:8-24).
Asserted Claims
The complaint asserts independent claim 1 and dependent claims 3, 4, and 6 (Compl. ¶72).
Accused Features
The complaint accuses the dailymail.co.uk website of infringing by determining whether an ad space is visible (e.g., at least 50%) and, in response, causing an ad request to be sent to dispatcher servers to serve advertisement content to that space (Compl. ¶76).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the website located at the domain dailymail.co.uk, also referred to as MailOnline or dailymail.com (Compl. ¶7, ¶45).
Functionality and Market Context
The complaint alleges that the dailymail.co.uk website is a news platform that displays advertisements in predefined spaces separate from its editorial content (Compl. ¶48). The allegedly infringing functionality includes systems that (1) determine when an ad space has been in view for a set time (e.g., 15 seconds) and then request a "replacement advertisement" for that space (Compl. ¶49); (2) detect when an ad has been scrolled past too quickly and cause it to "linger" in the viewport by detaching it from its original position (Compl. ¶64-66); and (3) determine an ad space is visible before causing an ad request to be sent to a server (Compl. ¶76). The complaint positions the website as a major media property, citing a report that it ranks eleventh among English-language news sites in the U.S. with approximately 114.9 million monthly users as of September 2023 (Compl. ¶9).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’329 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) determining whether a predefined area of an ad content display page that is used to display an advertisement is in view within a visible area of a browser window... | DMG determines whether a predefined ad space of its website is in view within a visible area of a browser window. The website includes the ad space and separate page content (e.g., news headlines and images). | ¶46, ¶48 | col. 50:10-15 |
| (b) in response to a determination that the predefined area that is used to display the advertisement has been in view within the visible area of the browser window for a predefined period of time, causing a communication to be sent to one or more dispatcher servers... | DMG determines that the ad space has been in view for a predefined period of time (e.g., 15 seconds) and, in response, causes a communication (e.g., an ad request) to be sent to one or more dispatcher servers. | ¶49 | col. 7:12-14 |
| wherein the one or more dispatcher servers are configured to: (i) receive the communication; (ii) cause a replacement advertisement to be selected for display on the ad content display page; and (iii) cause the replacement advertisement to be served... | The dispatcher servers are configured to receive the communication, cause a replacement advertisement to be selected for display on the website, and cause the replacement advertisement to be served to the remote computing device. | ¶49 | col. 17:10-21 |
| wherein the browser is further configured to render the replacement advertisement in the predefined area. | The browser is further configured to render the replacement advertisement in the predefined ad space. | ¶49 | col. 20:1-5 |
’115 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) setting in a memory a predetermined minimum amount of time that ad content for a particular ad placement area of the web content page is to appear in the viewport; | DMG sets a predetermined minimum amount of time that ad content for a particular ad placement area page is to appear in the viewport. | ¶61 | col. 16:30-33 |
| (b) detecting when the ad content for the particular ad placement area initially appears in the viewport and when the ad content for the particular ad placement area no longer appears in the viewport; and | DMG detects when the ad content for a particular ad placement area initially appears in the viewport and when the ad content for the particular ad placement area no longer appears in the viewport. | ¶62 | col. 16:34-39 |
| (c)(i) detaching the ad content for the particular ad placement area from the web content page and its respective ad placement area, and | DMG detaches the ad content for that particular ad placement area from the web content page and its respective ad placement area... | ¶64 | col. 16:46-49 |
| (c)(ii) positioning the detached ad content... in a location within the viewport and maintaining the ad content... within the viewport for at least an additional amount of time regardless of any scrolling... | ...and positions the detached ad content in a location within the viewport. DMG maintains the ad content... within the viewport for at least an additional amount of time regardless of any scrolling of the web content page. | ¶64, ¶65 | col. 16:50-57 |
Identified Points of Contention
- Scope Questions: For the ’329 patent, a central question will be whether the accused website's ad refreshing functionality meets the "replacement advertisement" limitation. The analysis will likely focus on whether the system selects a computationally distinct advertisement (e.g., through a new auction, as recited in dependent claim 2) or merely re-serves the same ad creative, which might not qualify as a "replacement."
- Technical Questions: For the ’115 patent, the infringement analysis will raise the technical question of how the "linger" effect is implemented. The claim requires "detaching" the ad from the web page. A court will have to determine if the accused website's code, which may use a CSS property like
position: fixed, performs an operation that meets the claim's "detaching" and "positioning" requirements, or if a more literal removal and re-appending of the element in the Document Object Model is required.
V. Key Claim Terms for Construction
Term from the ’329 Patent: "replacement advertisement"
- Context and Importance: This term is central to the invention of the ’329 patent. Whether the accused website infringes will depend heavily on whether the ad served after a time delay is legally construed as a "replacement." Practitioners may focus on this term because it distinguishes the invention from a simple ad refresh.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide an explicit definition, which may support an argument for applying its plain and ordinary meaning, where any new ad served could be considered a replacement for the one previously displayed.
- Evidence for a Narrower Interpretation: The specification describes embodiments involving an "ad swap program" ('329 Patent, Fig. 44) and a "replacement auction" ('329 Patent, cl. 2), suggesting that a "replacement" may imply a substantively different advertisement selected through a new competitive process, not just a re-rendering of the same creative.
Term from the ’115 Patent: "detaching the ad content ... from the web content page"
- Context and Importance: This phrase describes the core technical mechanism of the "linger" feature. The viability of the infringement claim for the ’115 patent hinges on whether the accused website's technical implementation of its "sticky" ads meets this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification notes that the ad is "essentially or figuratively detached" ('115 Patent, col. 8:38-39), which may support a construction that does not require a literal reprogramming of the element's position in the page's code structure but could include functional equivalents like CSS changes.
- Evidence for a Narrower Interpretation: The specification describes a process where position control is transferred from the "content page parameter control to viewport parameter control" ('115 Patent, col. 9:40-43). This language could support a narrower construction requiring a demonstrable change in how the browser's rendering engine positions the element, distinguishing it from a simple, static CSS property.
VI. Other Allegations
Willful Infringement
The complaint alleges willful infringement for all three patents-in-suit. The basis for this allegation is Defendant’s alleged pre-suit knowledge of the patents and the specific infringement allegations, which Plaintiff provided via a notice letter and detailed claim charts sent on May 17, 2023, more than three months before the original complaint was filed (Compl. ¶54, ¶69, ¶82).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of technical implementation: Does the accused website’s code for its "linger" ad feature perform the specific "detaching" and "positioning" steps required by the '115 patent, or does it achieve a similar visual effect through a technically distinct method, such as CSS styling, that may fall outside the claim scope?
- The case may turn on a central claim construction dispute: Can the term "replacement advertisement" in the '329 patent be construed broadly to include any re-served ad, or will it be limited to a computationally distinct ad selected through a new process like an auction, thereby narrowing the conduct that can be found to infringe?
- Despite Plaintiff’s pre-emptive arguments regarding patentability, a fundamental question remains one of patent eligibility: Will Defendant persuade the court that the claims are directed to the abstract business practice of managing ad display timing, or will the court agree with the reasoning cited by Plaintiff that the claims recite a specific, unconventional technological improvement to the functioning of computer networks themselves?