DCT

2:25-cv-00933

Rich Media Club LLC v. News Group Newspapers Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:25-cv-00933, E.D. Tex., 09/04/2025
  • Venue Allegations: Plaintiff alleges venue is proper because the Defendant is not a resident of the United States and may therefore be sued in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s online news platform, "The Sun Online," infringes five U.S. patents related to the technology for determining the viewability of online advertisements and triggering subsequent actions such as "lazy loading" or "ad refresh."
  • Technical Context: The technology addresses the core challenge in digital advertising of verifying whether an advertisement served on a webpage was actually visible to the user, a critical factor for accurate impression counting and billing.
  • Key Procedural History: The complaint highlights that a related patent survived a motion to dismiss on patent eligibility grounds in a prior case (D. Az.). It also notes that one of the patents-in-suit, the ’482 Patent, recently survived a petition for Inter Partes Review (IPR), with the Patent Trial and Appeal Board (PTAB) denying institution. Furthermore, the complaint asserts that the patents in the family repeatedly overcame subject matter eligibility rejections during prosecution. Plaintiff sent a notice of infringement letter to Defendant more than two years prior to filing the complaint.

Case Timeline

Date Event
2005-12-24 Earliest Priority Date for all Patents-in-Suit
2009-11-01 Contemporaneous blog post by David Cohen describing the technology
2017-11-21 U.S. Patent No. 9,824,074 Issues
2018-12-18 PTAB Ex Parte Krassner decision reverses § 101 rejection for related patent
2021-05-11 U.S. Patent No. 11,004,090 Issues
2022-10-11 U.S. Patent No. 11,468,453 Issues
2023-01-01 Arizona court finds related '329 Patent subject matter eligible
2023-06-07 Plaintiff sends pre-suit notice letter to Defendant
2023-07-06 Defendant acknowledges receipt of notice letter
2023-08-29 U.S. Patent No. 11,741,482 Issues
2024-05-17 IPR Petition filed against the '482 Patent by a third party
2024-10-17 PTAB denies institution of IPR against the '482 Patent
2024-10-22 U.S. Patent No. 12,125,051 Issues
2025-09-04 Complaint Filed

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

U.S. Patent No. 9,824,074 - "Content Rendering and Control System for a Pre-Defined Area of a Content Page"

The Invention Explained

  • Problem Addressed: The complaint describes the technical challenge of verifying whether an online advertisement was actually displayed within a user's browser window (the "viewport"), given that users have different screen sizes and may not scroll to see an entire webpage (Compl. ¶18-21). Advertisers sought a way to avoid paying for ads that were served but never seen, and publishers needed a way to prove ad viewability (Compl. ¶21).
  • The Patented Solution: The invention provides a system that uses code to compare the coordinates of a "pre-defined area" for content (e.g., an ad placeholder) on a webpage with the coordinates of the user's visible "application window." Based on this comparison, the system can determine if the area is inside, outside, or nearing the viewport, and then trigger instructions to retrieve and render content accordingly, a process commonly known as "lazy loading" (’453 Patent, col. 7:7-40; Compl. ¶22, ¶84).
  • Technical Importance: This technology provided a mechanism for accountability in the digital advertising industry, which was described contemporaneously as "a giant step forward for the industry" (Compl. ¶44).

Key Claims at a Glance

  • The complaint asserts independent claim 16 (Compl. ¶94).
  • The essential elements of Claim 16 include:
    • determining, by code, whether a pre-defined area on a content page is at least partially within a visible area of an application window by comparing coordinates;
    • determining, by code, whether the pre-defined area is completely outside the visible area but within a certain distance of it, also by comparing coordinates;
    • transmitting an indication of the pre-defined area's position relative to the visible area;
    • providing instructions to retrieve and render content in the pre-defined area in response to determining it is at least partially within the visible area; and
    • providing instructions to retrieve and render content in the pre-defined area in response to determining it is completely outside but within the predefined distance.
  • The complaint states it is only asserting infringement of the method claims of the patent (Compl. ¶95).

U.S. Patent No. 11,004,090 - "System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks"

The Invention Explained

  • Problem Addressed: Beyond simply loading an ad when it becomes viewable, the technology also addresses the opportunity to replace an ad that has been in a user's viewport for a sufficient period of time, thereby increasing revenue opportunities for a single ad slot (Compl. ¶70-71).
  • The Patented Solution: The invention describes a method where code served to a remote computing device first determines if an ad area is nearing the viewport to "lazy load" a first advertisement. The code then continues to "periodically determine" if the ad area is in view and, after it has been in view for a "predefined time," sends a communication to a server system, which then selects and serves a "replacement advertisement" to be rendered in the same area (’090 Patent, col. 70:23-72:8; Compl. ¶98). This process is referred to in the industry as "ad refresh" (Compl. ¶70).
  • Technical Importance: The complaint alleges that the "ad refresh" technology invented by the Plaintiff is at the heart of a business generating an estimated $24-42 billion or more per year in internet advertising (Compl. ¶72-73).

Key Claims at a Glance

  • The complaint asserts independent claim 23 (Compl. ¶98).
  • The essential elements of Claim 23 include:
    • designating a predetermined area on an ad content page;
    • serving the ad content page with associated code to a remote computing device;
    • providing that the remote device determines if the area is within a predefined distance outside the visible browser window and, in response, serving and rendering a first ad content ("lazy loading");
    • providing that the instructions further direct the remote device to periodically determine if the area is in view and, after a predefined time, send a communication to a server; and
    • providing that the server is configured to receive the communication, select a replacement advertisement, and serve it to be rendered in the predetermined area ("ad refresh").
  • The complaint states it is only asserting infringement of the method claims of the patent (Compl. ¶99).

U.S. Patent No. 11,468,453 - "System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks"

  • Patent Identification: U.S. Patent No. 11,468,453, "System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks," issued October 11, 2022 (Compl. ¶13).
  • Technology Synopsis: This patent relates to systems and methods for online advertising that combine the functionalities of both "lazy loading" and "ad refresh." The technology determines whether an ad space is nearing a user's viewport to trigger an initial ad load, and subsequently determines if a viewed ad should be replaced with a new one (Compl. ¶86).
  • Asserted Claims: At least Claim 5 is asserted (Compl. ¶102).
  • Accused Features: The accused features are on Defendant's websites that allegedly incorporate both the lazy loading and ad refresh functionalities (Compl. ¶86).

U.S. Patent No. 11,741,482 - "System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks"

  • Patent Identification: U.S. Patent No. 11,741,482, "System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks," issued August 29, 2023 (Compl. ¶14).
  • Technology Synopsis: This patent addresses "ad refresh" technology. The invention determines whether a sufficient percentage of an ad space is within a user's viewport and, if that condition is met, initiates a process to refresh the ad space with a new advertisement (Compl. ¶85). The complaint notes this patent was the subject of a failed IPR petition by a third party (Compl. ¶52-54).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶111).
  • Accused Features: The accused features are on Defendant's websites that allegedly determine ad viewability and initiate an ad refresh of the ad space (Compl. ¶85).

U.S. Patent No. 12,125,051 - "System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks"

  • Patent Identification: U.S. Patent No. 12,125,051, "System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks," issued October 22, 2024 (Compl. ¶15).
  • Technology Synopsis: This patent is directed to a computer program product with instructions for rendering advertisement content. The instructions, when executed, determine whether a predefined portion of an ad area is within the visible area of a browser window and, in response, cause a communication to be sent to a dispatcher server, which in turn causes new advertisement content to be served to the user's device (Compl. ¶120, Claim 1).
  • Asserted Claims: At least Claim 1 is asserted (Compl. ¶120).
  • Accused Features: The accused features are Defendant's "Ad Refresh Websites" that allegedly incorporate and use the claimed computer program (Compl. ¶120).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is the Defendant's digital news platform, including the website www.thesun.com ("The Sun Online") and associated apps (Compl. ¶3, ¶9).

Functionality and Market Context

  • The complaint alleges that The Sun's website displays advertisements using technologies that practice the patented inventions. These functionalities are categorized as "lazy loading" (loading an ad only when it is about to scroll into the user's viewport), "ad refresh" (replacing an ad after it has been in the viewport for a certain duration), or a combination of both (Compl. ¶83-86, ¶71). The complaint asserts that The Sun operates a U.S. edition of its website and generates advertising revenue from its U.S.-based readers (Compl. ¶10). Figure 51 from the patents, reproduced in the complaint, is a diagram used to explain the core technical concept of a "viewport" (labeled 41) within a browser, which is central to the accused functionality (Compl. p. 8, ¶28).

IV. Analysis of Infringement Allegations

'074 Patent Infringement Allegations

Claim Element (from Independent Claim 16) Alleged Infringing Functionality Complaint Citation Patent Citation
determining, by code executed by a computing system, whether a pre-defined area on a content page... is at least partially within a visible area of an application window... by comparing coordinates of the pre-defined area with coordinates of the application window... The Accused Lazy Loading Websites determine whether at least a portion of a pre-defined area (a placeholder for an ad display area) is within the viewport by comparing its coordinates with the coordinates of the web browser window. ¶94 '453 Patent, col. 8:25-40
determining, by the code..., whether the pre-defined area... is completely outside of the visible area... and is also within a distance outside of the visible area... by comparing the coordinates... The Accused Lazy Loading Websites also determine whether the ad placeholder area is completely outside the viewport but sufficiently close to it by comparing coordinates. ¶94 '453 Patent, col. 8:36-40
transmitting, by the code..., one or more indications selected from the group consisting of: an indication that the pre-defined area is at least partially within...; an indication that the pre-defined area is outside...; and an indication that the pre-defined area is within the distance outside... After determining the area's position relative to the viewport, the Accused Lazy Loading Websites transmit code identifying the determined state. ¶94, ¶21 '453 Patent, col. 9:1-9
in response to determining that the pre-defined area... is at least partially within the visible area..., provide instructions to: retrieve one or more content files; and render the one or more content files... The servers running the websites, based on determining the area is at least partially within the viewport, provide instructions to retrieve and render content (an ad). ¶94, ¶21 '453 Patent, col. 7:41-52
in response to determining that the pre-defined area... is completely outside... and is also within the pre-defined distance outside..., provide instructions to: retrieve one or more content files; and render... The servers running the websites, based on determining the area is completely outside the viewport but close to it, provide instructions to retrieve and render content (an ad). ¶94, ¶21 '453 Patent, col. 7:41-52

'090 Patent Infringement Allegations

Claim Element (from Independent Claim 23) Alleged Infringing Functionality Complaint Citation Patent Citation
designating, by one or more computing systems, a first predetermined area on an ad content page; The accused websites determine a "placeholder" area for the display of advertisements. ¶98 '090 Patent, col. 66:57-61
providing that... the ad content page with a designation of the predefined area and associated instructions in the form of code are served to a remote computing device operating a browser... The accused websites respond to user requests by sending the webpage, which includes the ad placeholder and associated code, to the user's computer and browser. ¶98 '090 Patent, col. 70:58-67
providing that the remote computing device determines whether the predefined area is within a predefined distance outside a visible area of the browser window and that in at least partial response... a first ad content is served... and rendered... Code running on the user's computer determines that the ad placeholder is outside but close to the viewport, and in response, an ad is served and rendered in the placeholder area ("lazy loading"). ¶98 '090 Patent, col. 70:27-33
wherein the instructions are configured... to direct the computing device to: periodically determine whether the first predetermined area is in view...; and in response to determining that the first predetermined area has been in view... for a predefined time, send a communication to one or more server computing systems; The accused websites monitor how long the ad placeholder has been within the viewport, and after a threshold time has passed, they send a request to a server for a new ad. ¶98 '090 Patent, col. 70:7-22
providing that the one or more server computing systems are configured to: receive the communication from the computing device; and in response... select a replacement advertisement... serve the replacement advertisement... The servers running the accused websites receive the communication indicating an ad area is ready for a refresh, and a replacement ad is then served to the user's computer to be rendered in the placeholder area. ¶98 '090 Patent, col. 70:18-26

Identified Points of Contention

  • Scope Questions: A potential issue may be the scope of "application window" as used in the ’074 Patent. The complaint alleges this reads on a "web browser window" (Compl. ¶94). The defense may argue for a different construction based on the patent's specification. Similarly, the meaning of "periodically determine" in the '090 Patent will be critical; whether this requires a fixed time interval or can be satisfied by event-driven checks (e.g., on scroll) could be a central dispute.
  • Technical Questions: The complaint alleges that the accused websites perform specific technical steps, such as "comparing coordinates" and monitoring viewability for a "predefined time" (Compl. ¶94, ¶98). A key question for the court will be what evidence Plaintiff provides to demonstrate that the code on Defendant's websites actually operates in the specific manner required by the claims, rather than achieving a similar result through a different technical method.

V. Key Claim Terms for Construction

  • The Term: "pre-defined area" (’074 Patent, Claim 16)

  • Context and Importance: This term is foundational to the claim, as it defines the object being tracked relative to the user's viewport. The dispute may center on whether this area must be statically defined in the webpage's source code or if it can be a dynamically generated placeholder for an advertisement. Practitioners may focus on this term because its construction could determine whether the claims cover modern, dynamic ad-serving technologies.

    • Evidence for a Broader Interpretation: The specification refers to the area as a "placeholder location on the content page in which content is to be rendered," language that may support a broader, more functional definition not tied to a static implementation (’074 Patent, Claim 16(a)).
    • Evidence for a Narrower Interpretation: The use of the word "pre-defined" itself suggests the area is established before the comparison step occurs. Specific embodiments or figures in the patent family, such as Figure 51, depict a "Content page" (21) as a seemingly static entity, which could be used to argue for a narrower construction (’482 Patent, Fig. 51).

  • The Term: "periodically determine" (’090 Patent, Claim 23)

  • Context and Importance: This term is critical for the "ad refresh" element. Its construction will determine the required frequency and nature of the viewability check. Whether "periodically" requires a strict, clock-based interval (e.g., every 100 milliseconds) or can encompass repeated, event-based checks (e.g., every time a scroll event fires) will be central to the infringement analysis.

    • Evidence for a Broader Interpretation: The ordinary meaning of "periodically" is "from time to time," which does not strictly require a fixed interval. The specification describes the "correlator code" as "periodically" checking browser coordinates, without necessarily limiting this to a fixed timer (’090 Patent, col. 8:28-31).
    • Evidence for a Narrower Interpretation: The specification discusses collecting information "at pre-defined intervals (information can be sent immediately, or collected and sent periodically)" (’482 Patent, col. 50:13-16). This language, along with potential implementations in sample code, might be cited to argue that "periodically" implies a pre-set, regular timing mechanism.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain specific counts for indirect infringement or allege facts supporting that Defendant instructs others to infringe.
  • Willful Infringement: The complaint alleges willful infringement for the ’453, ’482, and ’051 patents (Compl. ¶108, ¶117). The basis for willfulness is alleged pre-suit knowledge stemming from a detailed notice of infringement letter sent on June 7, 2023, which identified the ’453 patent and the application that became the ’482 patent (Compl. ¶87). The complaint further alleges that Defendant's subsequent refusal to engage in licensing negotiations demonstrates deliberate and willful conduct (Compl. ¶91, ¶105, ¶114).

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

  • Technical Implementation and Proof: A central evidentiary question will be one of operational correspondence: can Plaintiff produce evidence, likely from source code analysis, demonstrating that Defendant's websites perform the specific, multi-step methods of coordinate comparison, time-based monitoring, and server communication exactly as recited in the claims, or will Defendant show a fundamental mismatch in technical operation?
  • Claim Scope and Construction: A core legal issue will be one of definitional scope: can terms like "pre-defined area" and "periodically determine," which are rooted in the patent's disclosure, be construed to cover the specific, and potentially more dynamic, ad-serving technologies implemented on Defendant's modern web platform?
  • Validity Amidst a Contested History: While Plaintiff presents a history of overcoming validity challenges during prosecution and in a third-party IPR, a key question remains one of patentability: will Defendant be able to successfully argue, with new prior art or legal theories, that the asserted claims are invalid as obvious combinations of known web technologies, despite their successful history at the USPTO?