DCT
2:25-cv-00934
Rich Media Club LLC v. Gannett Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rich Media Club LLC (Florida / Utah)
- Defendant: Gannett Co., Inc. (New York)
- Plaintiff’s Counsel: Global IP Law Group, LLC
- Case Identification: 2:25-cv-00934, E.D. Tex., 09/04/2025
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant Gannett commits acts of infringement in the district and maintains a regular and established place of business through its subsidiary, LocaliQ, in Plano, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s websites, including usatoday.com, infringe five patents related to online advertising technologies, specifically methods for determining ad viewability, conditionally loading advertisements ("lazy loading"), and replacing existing ads with new ones ("ad refresh").
- Technical Context: The patents address the technical challenge of ensuring that online advertisements are actually visible to users on various devices and browser sizes, a key factor for monetization in the digital publishing industry.
- Key Procedural History: The complaint highlights a history of the patent family successfully overcoming patent-eligibility rejections under 35 U.S.C. § 101, both at the Patent Trial and Appeal Board (PTAB) and during examination for several of the patents-in-suit. It also notes that a petition for Inter Partes Review against the ’482 Patent was denied institution by the PTAB. Plaintiff sent a notice letter with claim charts to Defendant over two years prior to filing the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-24 | Earliest Priority Date for all Patents-in-Suit |
| 2017-11-21 | U.S. Patent No. 9,824,074 Issues |
| 2018-12-18 | PTAB Ex Parte Krassner decision reverses § 101 rejection on related application |
| 2021-05-11 | U.S. Patent No. 11,004,090 Issues |
| 2022-10-11 | U.S. Patent No. 11,468,453 Issues |
| 2023-06-19 | Plaintiff sends notice of infringement letter to Defendant |
| 2023-08-29 | U.S. Patent No. 11,741,482 Issues |
| 2024-05-17 | IPR Petition filed against the ’482 Patent |
| 2024-10-17 | PTAB denies institution of IPR against the ’482 Patent |
| 2024-10-22 | U.S. Patent No. 12,125,051 Issues |
| 2025-01-01 | Approximate end of licensing negotiations |
| 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”
Issued November 21, 2017
The Invention Explained
- Problem Addressed: The complaint describes the technical challenge of verifying whether an online advertisement actually entered a user’s viewable browser area (the "viewport"), which is critical because advertisers are unwilling to pay for ads that are never seen by consumers due to scrolling behavior or varying screen sizes (Compl. ¶¶17-18).
- The Patented Solution: The invention, as characterized in the complaint, provides a method to improve efficiency by determining if a pre-defined area for content (e.g., an ad slot) is currently outside of the user's viewport but is also "within a distance" of it. Upon this determination, the system provides instructions to retrieve and render content, such as an advertisement, into that area just as it is about to become visible. This technique is commonly known as "lazy loading" (Compl. ¶¶81, 90).
- Technical Importance: This approach avoids loading all webpage advertisements at once, which can improve page-load speed and reduce unnecessary data transfer for ads that a user never scrolls to see (Compl. ¶19).
Key Claims at a Glance
- The complaint asserts independent method claim 16 (Compl. ¶90).
- 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.
- Determining, by the code, whether the pre-defined area is completely outside the visible area but also within a certain distance of it.
- Transmitting an indication based on these determinations.
- In response to determining the area is completely outside but within the predefined distance, providing instructions to retrieve and render content files in that area.
U.S. Patent No. 11,004,090 - “System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks”
Issued May 11, 2021
The Invention Explained
- Problem Addressed: The patent background describes the general inefficiencies of prior online advertising systems, including the costs and labor associated with embedding advertising content directly into web pages and the difficulty in accurately tracking ad performance (’090 Patent, col. 6:5-13).
- The Patented Solution: The patented method combines two key functionalities: "lazy loading" and "ad refresh" (Compl. ¶83). First, it provides for serving an initial advertisement when a remote computing device determines that a predefined ad area is "within a predefined distance outside a visible area" of the browser window. Second, after this ad has been displayed within the visible area for a "predefined time," the device is directed to send a communication to a server, which then selects and serves a "replacement advertisement" to be rendered in the same area (’090 Patent, col. 69:1-70:54; Compl. ¶94). The relationship between the full content page and the visible browser window is illustrated in Figure 51, which is referenced in the complaint (Compl. ¶¶24-25).
- Technical Importance: This dual approach allows publishers to increase revenue from a single ad placement by showing multiple ads over time to an engaged user, while still gaining the performance benefits of only loading the initial ad when it is about to become viewable (Compl. ¶¶67-69).
Key Claims at a Glance
- The complaint asserts independent method claim 23 (Compl. ¶94).
- Essential elements of claim 23 include:
- Designating a predetermined area on an ad content page.
- Serving the page with instructions to a remote computing device.
- Providing that the remote device determines the area is within a predefined distance outside the visible browser window, which triggers a first ad to be served and rendered (lazy loading).
- Providing that the instructions further direct the device to periodically determine if the area has been in view for a predefined time.
- In response to such a determination, sending a communication to one or more server computing systems, which are configured to receive it, select a replacement ad, and serve it to the device for rendering (ad refresh).
U.S. Patent No. 11,468,453 - “System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks”
Issued October 11, 2022
- Technology Synopsis: This patent is described as covering both "lazy loading" and "ad refresh" features. The technology involves determining when an ad space is near the viewport to load an initial ad, and then determining when that ad has been viewed for a sufficient time to trigger a replacement ad (Compl. ¶83).
- Asserted Claims: At least claim 5 is asserted (Compl. ¶98).
- Accused Features: The "Accused Lazy Loading and Ad Refresh Websites" are alleged to infringe this patent (Compl. ¶98).
U.S. Patent No. 11,741,482 - “System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks”
Issued August 29, 2023
- Technology Synopsis: This patent relates to "ad refresh" technology. The invention involves determining whether a sufficient percentage of an ad space is within the user's viewport and, if so, initiating a process to refresh the ad space with a new advertisement (Compl. ¶82).
- Asserted Claims: At least claim 1 is asserted (Compl. ¶107).
- Accused Features: The "Accused Ad Refresh Websites" are alleged to infringe this patent (Compl. ¶107).
U.S. Patent No. 12,125,051 - “System and Method for Creation, Distribution and Tracking of Advertising via Electronic Networks”
Issued October 22, 2024
- Technology Synopsis: This patent claims a computer program product for rendering advertisement content. The program determines whether a predefined portion of an ad area is within the visible area of the browser window and, in response, sends a communication to dispatcher servers that then cause the advertisement content to be served to the user's device (Compl. ¶116).
- Asserted Claims: At least claim 1 is asserted (Compl. ¶116).
- Accused Features: The "Accused Ad Refresh Websites" are alleged to infringe this patent (Compl. ¶116).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are websites owned and operated by Gannett, including www.usatoday.com (Compl. ¶¶79-80). The complaint groups these into functional categories: "Accused Lazy Loading Websites," "Accused Ad Refresh Websites," and "Accused Lazy Loading and Ad Refresh Websites" (Compl. ¶¶81-83).
Functionality and Market Context
- The complaint alleges that the accused websites employ code that monitors the location of advertisement placeholders relative to the visible portion of a user's web browser, or "viewport" (Compl. ¶¶16, 90). Based on this monitoring, the websites are alleged to perform two primary functions: (1) loading ads only when an ad space is about to scroll into a user's view ("lazy loading"), and (2) replacing an ad that has been in the viewport for a period of time with a new ad ("ad refresh") (Compl. ¶¶81-83, 94). The complaint alleges that "ad refresh" technology is a core part of the modern internet advertising business, responsible for an estimated $24-42 billion in annual revenue (Compl. ¶¶69-70, 73). The complaint includes a diagram from the patent family, Figure 51, to illustrate the technical concept of the viewport in relation to the larger content page (Compl. ¶24).
IV. Analysis of Infringement Allegations
’9,824,074 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... | The Accused Lazy Loading Websites determine whether at least a portion of a pre-defined area (for example, a placeholder for an ad display area) of a content page is within the viewport. | ¶90 | Not provided in complaint |
| determining, by the code executed by the computing system, whether the pre-defined area on the content page... is completely outside of the visible area of the application window and is also within a distance outside of the visible area of the application window... | The Accused Lazy Loading Websites also determine whether the pre-defined area is completely outside the viewport but also sufficiently close to the viewport. | ¶90 | Not provided in complaint |
| transmitting, by the code executed by the computing system, one or more indications selected from the group consisting of: an indication that the pre-defined area is at least partially within the visible area... an indication that the pre-defined area is outside the visible area... and an indication that the pre-defined area is within the distance outside of the visible area... | After determining the position of the predefined area(s), the Accused Lazy Loading Websites transmit code identifying the status of those areas. | ¶90 | Not provided in complaint |
| in response to determining that the pre-defined area... is completely outside of the visible area of the browser window and is also within the pre-defined distance outside of the visible area of the browser window, provide instructions to: retrieve the one or more content files; and render the one or more content files in the pre-defined area... | The servers running the Accused Lazy Loading Websites, based on determining that the pre-defined area is completely outside the viewport but also close to it, provide instructions to retrieve and render content (an ad, for example). | ¶90 | Not provided in complaint |
’11,004,090 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 Lazy Loading and Ad Refresh Websites determine a first predetermined area of an ad content page, e.g., the "placeholder" area for the display of advertisements. | ¶94 | col. 7:13-17 |
| providing that, in response to a request, the ad content page... are served to a remote computing device operating a browser and displaying a browser window; | The Accused Lazy Loading and Ad Refresh Websites respond to requests by sending the webpage to the user's computer. | ¶94 | col. 51:53-57 |
| 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 to such determination a first ad content is served to the remote computing device and rendered in the first predetermined area; | Code on the user's computer determines that the predefined area is outside the viewport but close to it, and in response, an ad is served to the user's computer and rendered in the placeholder area ("lazy loading"). | ¶94 | col. 7:35-41 |
| 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 in the viewport, and after a threshold time, send a request to a server for a "second print" ad. | ¶94 | col. 55:5-13 |
| providing that the one or more server computing systems are configured to: receive the communication... select a replacement advertisement... serve the replacement advertisement... and... cause that the replacement advertisement is rendered... | The servers receive the communication for an ad refresh, and a replacement ad is served to the user's computer and rendered in the ad placeholder area. | ¶94 | col. 68:20-33 |
Identified Points of Contention
- Scope Questions: A primary point of contention may be the scope of claim terms such as "within a distance outside of the visible area" (’074 Patent) and "predefined time" (’090 Patent). The defense could argue for a narrow construction based on specific examples in the patent specification, while the plaintiff may argue for a broader, plain-meaning interpretation. The outcome of this definitional dispute will be critical to whether the accused websites’ specific triggering mechanisms for lazy loading and ad refreshing fall within the claim scope.
- Technical Questions: The complaint's infringement allegations are presented at a high level. A key technical question will be what evidence demonstrates that Gannett’s websites perform the specific, ordered sequence of steps recited in the method claims. For example, regarding claim 23 of the ’090 Patent, discovery will need to establish that the accused system first performs a location-based "lazy load" determination and then performs a separate, time-based "ad refresh" determination as a distinct subsequent step, as required by the claim structure.
V. Key Claim Terms for Construction
The Term: "within a distance outside of the visible area of the application window"
(from claim 16 of the ’074 Patent)
Context and Importance
- This term defines the trigger zone for "lazy loading." The interpretation of "a distance" will determine how far away from the viewport an ad can be and still be loaded pre-emptively. Practitioners may focus on this term because its breadth could determine whether a wide variety of lazy loading implementations infringe, or only those that use a trigger zone closely matching what is described in the patent.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The use of the indefinite article "a" in "a distance" suggests that the patent is not limited to a single, specific distance, but could encompass any predetermined distance set by the system (’090 Patent, col. 7:37-38).
- Evidence for a Narrower Interpretation: The specification of the related patents, which form the intrinsic record, may describe specific embodiments or examples that could be used to argue the term is limited to a particular type of proximity or a range of distances, rather than any arbitrary distance (’090 Patent, Fig. 51).
The Term: "predefined time"
(from claim 23 of the ’090 Patent)
Context and Importance
- This term is central to the "ad refresh" limitation, as it defines the duration of viewability required to trigger a new ad. The construction of this term will determine whether Gannett's ad refresh timer meets the claim limitation.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The word "predefined" suggests only that the time must be set in advance of the determination, which could be a static value (e.g., 15 seconds) or a dynamically determined value, supporting a broad scope. The patent specification refers to "a pre-determined period of time" without being strictly limited in the claim language (’090 Patent, col. 13:13-15).
- Evidence for a Narrower Interpretation: A defendant may point to specific examples in the specification, such as the mention of "one second" in the context of a viewable impression, to argue that the "predefined time" should be construed as a similarly short duration typical for establishing viewability, rather than a longer duration intended to signal user disengagement (’090 Patent, col. 55:10-13).
VI. Other Allegations
Willful Infringement
- The complaint alleges willful infringement of the ’453 and ’482 Patents (Compl. ¶¶104, 113). The allegations are based on pre-suit knowledge stemming from a notice of infringement letter sent to Gannett on June 19, 2023, which allegedly included detailed claim charts (Compl. ¶84). The complaint further alleges that Gannett's "deliberate and willful refusal to participate in voluntary licensing negotiations" after receiving notice constitutes willful conduct (Compl. ¶¶103, 112).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and construction: can functionally-oriented terms like "within a distance" and "predefined time," which describe the triggers for lazy loading and ad refreshing, be construed broadly enough to read on the specific software logic and timing mechanisms implemented in Gannett’s high-traffic commercial websites?
- A second key issue will be one of evidentiary proof: beyond the conclusory allegations in the complaint's claim charts, what technical evidence will emerge from discovery to demonstrate that the accused websites' code executes the precise, ordered series of steps recited in the asserted method claims, particularly the two-stage lazy-load-then-refresh sequence of claim 23 of the '090 patent?
- A third issue may be patent eligibility: while the complaint dedicates significant space to arguing the patent eligibility of the claimed inventions under 35 U.S.C. § 101 by citing favorable prosecution histories and court decisions for related patents (Compl. ¶¶34-48), the defendant will likely challenge this, raising the question of whether the claims are directed to the abstract idea of timing and placing advertisements, or to a specific, patent-eligible improvement in computer functionality.