Err Content IP LLC v. Hisense USA Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Err Content IP, LLC (Texas)
  • Defendant: Hisense USA Corp. (Georgia)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 2:24-cv-01053, E.D. Tex., 12/16/2024
• Venue Allegations: Venue is alleged to be proper in the Eastern District of Texas because Defendant maintains a regular and established place of business in the district and has allegedly committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s smart televisions infringe a patent related to methods for displaying supplemental content on a second device (e.g., a smartphone) that is associated with primary content being shown on a first device (e.g., a television).
• Technical Context: The technology at issue addresses the creation of "second screen" experiences, a feature in the smart TV market that allows viewers to engage with interactive, related content on a handheld device without interrupting the primary program.
• Key Procedural History: Plaintiff identifies itself as a non-practicing entity and discloses that it and its predecessors have entered into settlement licenses with other entities in prior matters. The complaint includes extensive pre-emptive arguments against a potential defense under the patent marking statute, asserting that no marking obligation was ever triggered.

Case Timeline

Date	Event
2012-04-26	'542 Patent Priority Date
2020-07-21	'542 Patent Issue Date
2024-12-16	Complaint Filing Date

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

U.S. Patent No. 10,721,542 - Method and Device for Providing a Main Content and an Extra Content to a User Through Reference Item

(Issued July 21, 2020)

The Invention Explained

• Problem Addressed: The patent describes a limitation in then-current systems where a user watching main content (e.g., a TV program) would have to navigate away from that content to access related supplemental information ("extra content"), creating a disjointed user experience (ʼ542 Patent, col. 1:33-44).
• The Patented Solution: The invention proposes a method using two devices to solve this problem. A first device (e.g., a TV) receives and displays "main content" along with associated "metadata." This metadata is then forwarded to a separate, second device (e.g., a smartphone). The second device uses the metadata to retrieve and display the "extra content" from a different source (e.g., an internet server), thereby allowing the user to view the supplemental information on the second screen while the main content continues uninterrupted on the first ('542 Patent, Abstract; col. 2:22-38).
• Technical Importance: This two-screen approach was designed to deepen user engagement by enabling simultaneous, synchronized viewing of primary and related secondary content, a key feature in the development of interactive television ('542 Patent, col. 1:53-61).

Key Claims at a Glance

• The complaint asserts claims 1-14, with independent claim 1 appearing to be central to the allegations (Compl. ¶8).
• The essential elements of independent claim 1 include:
  • Receiving a "specific main content" and "metadata" from a first source, which are "broadcasted together."
  • Displaying the main content on a "first device."
  • Forwarding the metadata to a "second device," a step that is "executed by scanning said metadata by said second device."
  • The second device then receives "extra content" from a "second source" (different from the first source).
  • Displaying the main content on the first device while the extra content is displayed on the second device.
• The complaint reserves the right to assert dependent claims (Compl. ¶8).

III. The Accused Instrumentality

Product Identification

The complaint accuses "systems and methods for displaying content" implemented in Defendant's products and services, pointing specifically to Hisense televisions (Compl. ¶8, ¶12).

Functionality and Market Context

The complaint alleges that Hisense develops, manufactures, and sells infringing systems, suggesting that features within its television products enable the infringing method (Compl. ¶8). The complaint points to Defendant's television product website as evidence of the accused instrumentalities but does not describe the specific technical operation of the accused features (Compl. ¶12). The complaint does not provide sufficient detail for a more granular analysis of the accused functionality.

IV. Analysis of Infringement Allegations

The complaint states that a preliminary claim chart is attached as Exhibit B; however, that exhibit was not included with the public filing (Compl. ¶9). The infringement theory must therefore be summarized from the complaint's narrative allegations.

The complaint alleges that Hisense's systems and methods infringe the '542 patent by performing the claimed steps (Compl. ¶8). The narrative description suggests that Hisense's products receive main content from a first source and, based on an associated "reference item" (i.e., metadata), retrieve and display "extra content" from a second source, with the potential for this to occur across two separate devices (Compl. ¶7). No probative visual evidence provided in complaint.

Identified Points of Contention

• Scope Questions: A central dispute may arise over the claim limitation "forwarding of said metadata is executed by scanning said metadata by said second device." The patent specification provides an example of scanning a visual QR-code ('542 Patent, col. 3:57-65). This raises the question of whether the term "scanning" can be construed to read on the non-visual, wireless data transfer protocols likely used by modern smart TVs and companion mobile applications.
• Technical Questions: The infringement case appears to depend on a two-device architecture. A primary technical question will be what component within the accused Hisense ecosystem constitutes the claimed "second device." The complaint does not specify whether this is alleged to be a user's smartphone, a smart remote with a display, or another component, nor does it provide evidence that such a device performs the claimed steps of scanning, receiving, and displaying content from a second source.

V. Key Claim Terms for Construction

The Term: "scanning said metadata by said second device" (Claim 1)

• Context and Importance: This term defines the specific mechanism for transferring information between the two devices. Its construction is critical, as a narrow definition limited to optical scanning could present a significant hurdle for the infringement case if the accused systems use a different technology.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Practitioners may argue that the term should not be limited to its examples, pointing to more general language in the specification about "forwarding" a reference item to a second device, which could encompass various forms of data transmission ('542 Patent, col. 3:9-15).
  • Evidence for a Narrower Interpretation: Practitioners may argue the term is constrained by its more specific disclosures. The patent explicitly describes using "visual codes systems, such as QR-codes, bar codes or optical machine-readable data," and the claims later refer to the forwarding being "executed by scanning" ('542 Patent, col. 3:57-65; col. 8:59-62). This could support an interpretation that requires an active, optical-style data capture by the second device.

The Term: "second device" (Claim 1)

• Context and Importance: The identity and capabilities of the "second device" are fundamental to the claimed method. Infringement requires proof that a distinct second device performs the claimed functions.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification provides a list of exemplary second devices, including a "tablet PC, Smartphone, cellular phone, PC, laptop or a remote control," which could support a broad definition covering any separate electronic device capable of communication and display ('542 Patent, col. 5:7-9).
  • Evidence for a Narrower Interpretation: Claim 1 requires the "second device" to perform a sequence of functions: it must execute the "scanning," "receive[] said extra content from a second source," and display that content. An interpretation limiting the "second device" to an apparatus that performs all of these claimed functions could be advanced, potentially excluding devices that lack a display or do not independently fetch content from a server.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. The factual basis for these claims includes allegations that Defendant encourages and instructs its customers on how to use the accused features through its "website and product instruction manuals" (Compl. ¶10, ¶12).
• Willful Infringement: The willfulness claim is based on alleged knowledge of the '542 patent "from at least the filing date of the lawsuit," suggesting a theory of post-suit willfulness (Compl. ¶10-12). The prayer for relief requests a finding of willful infringement and treble damages (Compl. ¶VI.e).

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

• A core issue will be one of definitional scope: can the claim term "scanning... by said second device," which the patent exemplifies with optical codes, be construed to cover the likely non-optical data communication protocols used between Defendant's smart TVs and companion devices? The viability of the infringement case may hinge on this construction.
• A key evidentiary question will be one of system operation: does the accused Hisense ecosystem function as the two-device system required by the patent? Plaintiff will bear the burden of demonstrating that a specific, distinct "second device" performs the full sequence of claimed steps—scanning metadata, independently retrieving content from a second source, and displaying it—in the manner claimed by the patent.