DCT
2:23-cv-00507
Mychoice LLC v. Taiv Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MyChoice, LLC (Massachusetts) and BarBoards, LLC (Texas)
- Defendant: Taiv, Inc. (Manitoba, Canada)
- Plaintiff’s Counsel: Perkins Coie LLP
- Case Identification: 2:23-cv-00507, E.D. Tex., 04/22/2025
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign corporation and has committed acts of infringement within the district, including installing and maintaining its systems for customers in Texas.
- Core Dispute: Plaintiffs allege that Defendant’s advertising replacement system, used in venues like bars and restaurants, infringes a patent related to dynamically replacing undesirable content in a media stream based on user preferences.
- Technical Context: The technology at issue falls within the domain of dynamic ad insertion and content curation for live media, a market targeting businesses that wish to customize the viewing experience for on-site patrons.
- Key Procedural History: The complaint alleges that Plaintiff MyChoice provided Defendant Taiv with pre-suit notice of infringement on at least two occasions: a LinkedIn communication to Taiv's CEO in August 2022, which included a copy of the patent and a claims analysis, and a letter from counsel in February 2023. These notices are asserted as a basis for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2017-06-22 | ’658 Patent Priority Date |
| 2020-07-07 | ’658 Patent Issue Date |
| 2022-01-01 | Defendant's alleged promotion and sales began "as early as 2022" |
| 2022-08-04 | Plaintiff allegedly sent notice of infringement to Defendant's CEO |
| 2023-02-28 | Plaintiff's counsel allegedly sent notice letter to Defendant's CEO |
| 2025-04-22 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,708,658 - “Video Viewing Experience Enhanced Through Custom Curation”
- Issued: July 7, 2020
The Invention Explained
- Problem Addressed: The patent addresses the issue of viewers wishing to avoid "undesirable content" (such as commercials or uninteresting portions of a live event) in a media stream without resorting to cumbersome manual "channel surfing" or watching on a time-delay (’658 Patent, col. 1:22-41).
- The Patented Solution: The invention is a system and method where a "monitoring station" automatically detects undesirable content in a media stream based on stored user preferences. Upon detection, it selects and provides substitute content that is aligned with the user's preferences and the primary content's attributes, then triggers the user's output device to switch to the substitute stream. The system later detects the end of the undesirable content and switches back automatically (’658 Patent, col. 2:54-67; Fig. 1).
- Technical Importance: This approach automates the process of avoiding unwanted content, aiming to create a more individualized and seamless viewing experience for live media without user intervention during the content swap (’658 Patent, col. 2:49-53).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 (’658 Patent, Compl. ¶19).
- Independent Claim 1 is a method claim comprising the essential elements of:
- Detecting undesirable content in a first media stream in real-time, based on a stored user preference.
- Selecting substitute content that has attributes associated with both the primary content and user preferences for desirability.
- In response to detection, transmitting a first trigger signal and directing an output device to a second media stream with the substitute content.
- Concurrently with detection, configuring in a database an "undesirable content attribute" and associating it with the first media stream.
- The output device switching to the second media stream.
- Monitoring for the end of the undesirable content.
- Transmitting a second trigger signal upon detecting the end.
- Concurrently with detecting the end, "changing" the undesirable content attribute in the database.
- The output device switching back to the first media stream.
III. The Accused Instrumentality
Product Identification
Defendant Taiv, Inc.’s “Custom Content Replacement System” (Compl. ¶6).
Functionality and Market Context
The accused instrumentality is a hardware and software system installed in commercial venues like bars and restaurants (Compl. ¶6). It is designed to replace television commercials in a live media feed with custom content, such as advertisements for the venue's own specials and events (Compl. ¶6, ¶19). The system allegedly uses a "heuristics-based computer vision approach for classification" to "detect TV commercials accurately" in real-time (Compl. ¶19, p. 7). The complaint alleges the system is marketed as a way to make the content "more relevant and interesting" for customers (Compl. ¶19, p. 6). The complaint includes a screenshot from Taiv's website that describes how the system connects to an existing cable box to swap out content. (Compl. ¶19, p. 6).
IV. Analysis of Infringement Allegations
’658 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of replacing undesirable content in a first media stream being received by an output device which transmits media to a display viewable by a user... | Taiv’s system is an add-on to a cable box (output device) that connects to an existing system to make content on a first media stream more relevant. | ¶19 | col. 7:60-66 |
| detecting in real-time, by a monitoring station, the undesirable content in the first media stream, wherein the undesirable content corresponds to a user preference indicating undesirability... | Taiv installs hardware (monitoring station) that analyzes the live TV feed's image in real-time to understand when a commercial (undesirable content) has come on. | ¶19 | col. 8:5-9 |
| selecting substitute content, by the monitoring station, wherein the substitute content has a plurality of substitute content attributes, at least one... associated with the primary content attribute... and at least one... directly associated with a second user preference indicating desirability; | The system allows the venue to use ad slots for its own upsells and events (substitute content) or play music "to improve your atmosphere" (user preference indicating desirability). | ¶19 | col. 8:10-19 |
| responsive to detecting in real-time the undesirable content... transmitting, from the monitoring station, a first trigger signal, and directing the output device to a second media stream... | The system analyzes the image from the first media stream, and upon detecting a commercial, it switches over to custom content (a second media stream). A referenced demo video allegedly shows this functionality. | ¶19 | col. 8:20-25 |
| further responsive to detecting in real-time the undesirable content... configuring, in the system database, an undesirable content attribute and associating the undesirable content attribute with the first media stream; | The complaint alleges Taiv uses a "heuristics-based computer vision approach for classification" to detect commercials. | ¶19 | col. 8:26-30 |
| wherein the output device switches from the first media stream to the second media stream in response to the first trigger signal; | The system "dynamically insert[s] ads that are perfect for that environment" when it cuts to a commercial break. | ¶19 | col. 8:31-33 |
| after transmitting the first trigger signal, monitoring, by the monitoring station, the first media stream for an end to the undesirable content; | The complaint alleges the system switches to alternate content at the beginning of a commercial break and runs it "through the end of commercial break," implying monitoring for the end. | ¶19 | col. 8:34-37 |
| responsive to detecting the end to the undesirable content... transmitting, from the monitoring station, a second trigger signal to the output device; | The system runs alternate content until the commercial break is over, and then returns to regular programming, which suggests a second trigger is sent upon detecting the end. | ¶19 | col. 8:38-41 |
| further responsive to detecting the end... changing, in the system database, the undesirable content attribute associated with the first media stream; | The complaint re-cites the "heuristics-based computer vision approach" as evidence for this limitation. | ¶19 | col. 8:42-45 |
| wherein the output device switches from the second media stream to the first media stream in response to the second trigger signal. | It is confirmed that the system switches from the alternate content back to the regular programming when the commercial break is over. | ¶19 | col. 8:46-49 |
Identified Points of Contention
- Scope Questions: A central question may be whether the "user preference" required by the claim can be satisfied by a business owner's global decision to replace all commercials, as opposed to the patent's description of individualized profiles for viewers (e.g., "Tom, Dick, and Harry") with granular likes and dislikes (’658 Patent, Fig. 4). The complaint alleges the preference is to "improve your atmosphere," which raises the question of whether this business goal constitutes the claimed "user preference indicating undesirability" for a specific content type.
- Technical Questions: The complaint's evidence for the "configuring" and "changing" of a specific "undesirable content attribute" in a database relies on general statements about a "heuristics-based computer vision approach" (Compl. ¶19, p. 7-8). A key technical question will be whether Taiv's system actually performs these specific data-manipulation steps as claimed, or if it merely detects the start and end of a commercial block without creating and modifying a formal data "attribute" as the claim language may require.
V. Key Claim Terms for Construction
"user preference"
- Context and Importance: The definition of this term is critical because the entire method is triggered by detecting content corresponding to a "user preference indicating undesirability". Practitioners may focus on whether the "user" must be the end-viewer or can be the system owner (the bar). The patent specification provides examples of detailed profiles for individual viewers (’658 Patent, Fig. 4; col. 10:37-44), while the accused system is operated by a business for a business purpose (Compl. ¶6).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that preferences can be "learned by the system based on viewing habits" or based on "user provided feedback," which could arguably apply to a business owner programming the system (’658 Patent, col. 9:44-48).
- Evidence for a Narrower Interpretation: The patent repeatedly discusses individualized viewing and provides detailed examples of different users ("Tom," "Dick," "Harry") with distinct profiles of likes and dislikes for specific content like "halftime" or "blowouts," suggesting the "user" is the ultimate viewer (’658 Patent, col. 10:37-44, Fig. 4).
"configuring... an undesirable content attribute" and "changing... the undesirable content attribute"
- Context and Importance: These limitations require specific data management actions within a "system database." The infringement case depends on whether Taiv's real-time computer vision detection of a commercial can be equated to these database operations. Practitioners may focus on this term because it appears to require more than simple detection; it suggests the creation and subsequent modification of a specific data flag or field.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that any internal state change or flagging mechanism used by the system to track that a commercial is "on" and then "off" meets the spirit of "configuring" and "changing" an attribute. The patent does not specify the precise architecture of the database.
- Evidence for a Narrower Interpretation: The claim language is specific, using distinct verbs ("configuring," "associating," "changing") that imply formal database transactions. The patent's figures and description detail associations between content and attributes stored in a database, supporting a more structured interpretation than a transient state flag (’658 Patent, Fig. 3; col. 9:36-41).
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement under 35 U.S.C. § 271(b), stating that Taiv provides its customers (e.g., bar owners) with instruction materials, training, and support, thereby encouraging and aiding them to directly infringe by operating the accused system (Compl. ¶26-27). It is also alleged that Taiv contributes to infringement under § 271(c) by providing a material part of the invention that is not a staple article of commerce (Compl. ¶28-29).
Willful Infringement
The complaint alleges willful infringement based on pre-suit knowledge of the ’658 Patent. Specific allegations include a LinkedIn message to Taiv's CEO on August 4, 2022, containing the patent and a claims analysis, and a subsequent letter from counsel on February 28, 2023 (Compl. ¶16-17). The complaint further alleges that Taiv has a policy of not investigating such notices, which Plaintiffs contend supports a finding of willfulness (Compl. ¶33).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the patent's concept of a "user preference", which is illustrated with granular, individual viewer profiles, be construed to cover a commercial entity's global business decision to block all television commercials to "improve [the] atmosphere"?
- A key evidentiary question will be one of technical proof: does the complaint provide sufficient factual support that Taiv’s "heuristics-based computer vision" system performs the specific, claimed database operations of "configuring" and later "changing" an "undesirable content attribute," or does the accused system's functionality diverge from the technical steps required by the claim language?
- A third question concerns knowledge and intent: given the alleged pre-suit notice that included a claims analysis, the focus will be on what steps, if any, Taiv took to investigate the infringement allegations, which will be central to the claim for willful infringement.