DCT
1:20-cv-00010
MONKEYmedia Inc v. Amazon.com Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MONKEYmedia, Inc. (Texas)
- Defendant: Amazon.com, Inc. (Delaware)
- Plaintiff’s Counsel: BRAGALONE OLEJKO SAAD PC; GRAVES, DOUGHERTY, HEARON & MOODY, P.C.
- Case Identification: 1:20-cv-00010, W.D. Tex., 12/06/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains a regular and established place of business, employs over a thousand individuals, and operates a technology hub and distribution center within the district.
- Core Dispute: Plaintiff alleges that Defendant’s video-on-demand services, specifically the "X-Ray" feature available on Amazon Fire devices and the Prime Video application, infringe four patents related to a "Seamless Expansion" technology for inserting optional content into a primary media stream.
- Technical Context: The technology domain is interactive media, specifically methods that allow viewers to access supplemental information, such as bonus content or detailed product information, without permanently navigating away from a primary video stream.
- Key Procedural History: The complaint notes that U.S. Patent No. 6,393,158 underwent reexamination, resulting in new claims which are now asserted. It also discloses that U.S. Patent No. 9,247,226 was the subject of an Inter Partes Review (IPR), which resulted in an adverse judgment against independent claims 1 and 7; accordingly, those claims are not asserted in this action. Plaintiff also alleges it provided Defendant with actual notice of infringement as early as June 2, 2017.
Case Timeline
| Date | Event |
|---|---|
| 1994-XX-XX | Alleged conception of the "Seamless Expansion" patent family inventions |
| 1999-04-23 | Earliest Priority Date for '158, '379, '226, and '298 Patents |
| 2002-05-21 | U.S. Patent No. 6,393,158 Issued |
| 2013-02-22 | Reexamination Certificate issued for U.S. Patent No. 6,393,158 |
| 2015-11-10 | U.S. Patent No. 9,185,379 Issued |
| 2016-01-26 | U.S. Patent No. 9,247,226 Issued |
| 2017-06-02 | Plaintiff allegedly notified Defendant of infringement of the patent family |
| 2018-08-14 | U.S. Patent No. 10,051,298 Issued |
| 2023-12-06 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,393,158 - "Method And Storage Device For Expanding And Contracting Continuous Play Media Seamlessly"
- Issued: May 21, 2002 (Reexamination Certificate issued February 22, 2013)
The Invention Explained
- Problem Addressed: The patent’s background section describes prior art video playback systems as "flat," offering no way for a user to "delve into a topic as a contiguous part of the stream." It further notes that television advertising is constrained to brief "sound bites" without the ability for interested customers to direct an inquiry into product facts. (’158 Patent, col. 1:52-57, 2:28-34).
- The Patented Solution: The invention provides a method for playing segmented media content where, during a primary media segment, a user is presented with a cue for optional "expansion content." If the user selects the cue, the system plays the expansion content and then uses a linking architecture to seamlessly resume the primary content stream at or near where it was paused. (’158 Patent, Abstract; col. 7:34-67).
- Technical Importance: The claimed method provided a framework for adding interactivity and layers of informational depth to linear, digitized video content (such as on DVDs or early digital broadcasts), which historically lacked the interactive nature of web-based hypertext. (’158 Patent, col. 2:1-25).
Key Claims at a Glance
- The complaint asserts independent claim 37, which was added during reexamination. (Compl. ¶20).
- Essential elements of claim 37 include:
- Providing a plurality of content segments, each with a start (first terminus) and end (second terminus).
- Playing at least one segment.
- Determining, before the end of the segment, whether a content expansion is desired.
- If desired, linking to and playing an expansion segment.
- If not desired, linking to and playing a continuing segment.
- Providing an additional link from the expansion segment back to the continuing segment so playback can resume.
- Highlighting an "expansion segment cue," which is one of a plurality of cues held in an "expansion cue container."
- Determining if the expansion is desired is based on whether the expansion cue is selected.
- The complaint also asserts dependent claims 40 and 41. (Compl. ¶20).
U.S. Patent No. 9,185,379 - "Medium And Method For Interactive Seamless Branching And/Or Telescopic Advertising"
- Issued: November 10, 2015
The Invention Explained
- Problem Addressed: The patent addresses the same limitations in linear and advertising-supported video as the ’158 Patent, namely the lack of user-directed interactivity and informational depth. (’379 Patent, col. 1:51-56, 2:32-40).
- The Patented Solution: The invention is embodied in a computer-readable storage medium containing instructions for a device. The instructions cause the device to receive and play a main media stream, present a "visual expansion cue" corresponding to optional content, and determine if a user elects the expansion. A key aspect is that this election "does not necessitate pushing of a physical button." Upon election, the system establishes a resume point, fetches and plays the expansion, and then resumes the main content stream. (’379 Patent, Abstract; col. 27:46-28:67).
- Technical Importance: This patent refines the seamless expansion concept by focusing on the user interface and input methods, contemplating more fluid interactions like gestures or voice commands suitable for modern streaming devices and smart TVs. (’379 Patent, col. 28:54-58).
Key Claims at a Glance
- The complaint asserts independent claim 21. (Compl. ¶33).
- Essential elements of claim 21 include:
- A computer readable storage media with instructions to cause a device to:
- Begin receiving a main content continuous play media stream.
- Generate a signal to play a first subset of the stream, presenting a "highlighted discernible entity" as a "visual expansion cue" that invites a user to elect an expansion.
- The visual expansion cue is one of a plurality of cues presented simultaneously in a visually distinguished subset of the display.
- Determine if there is user input electing an expansion, where such election "does not necessitate pushing of a physical button."
- If no input, generate a signal to play a second, subsequent subset of the main stream.
- If input is detected, perform a series of steps including establishing a resume point, fetching the expansion, and playing the expansion before resuming the main content.
- The complaint also asserts dependent claims 22, 24-25, and/or 27. (Compl. ¶33).
U.S. Patent No. 9,247,226 - "Method And Storage Device For Expanding And Contracting Continuous Play Media Seamlessly"
- Issued: January 26, 2016
Technology Synopsis
This patent describes a computer-readable medium with instructions to implement seamless expansion. Its claims focus on the technical steps of fetching primary content, establishing interruption and resume-point termini for a content segment at an "expansion decision point" if a user selects an expansion, providing a highlighted expansion cue distinct from the primary content, and then executing the branch to the expansion content or continuing the primary stream based on the user's election. (’226 Patent, Abstract; Compl. ¶49).
Asserted Claims
Computer readable media claims 2-6 and/or method claims 8-12. (Compl. ¶46).
Accused Features
The Amazon Fire Stick and similar devices, when running the Amazon Video App with X-Ray-enabled content, are alleged to comprise the computer-readable media storing instructions that perform the claimed method. (Compl. ¶¶48-49).
U.S. Patent No. 10,051,298 - "Wireless Seamless Expansion And Video Advertising Player"
- Issued: August 14, 2018
Technology Synopsis
This patent claims a physical "media player" apparatus configured for seamless expansion. The claims recite a combination of hardware components, including an interface circuit for wirelessly receiving content, a display circuit, a selector interface, memory, and a digital controller. The controller is described as being capable of executing the seamless expansion process: playing main content, presenting a visual cue, detecting user input for the expansion (without a button push), storing a resume point, receiving and playing the expansion, caching a portion of the main stream, and then resuming the main stream from the resume point. (’298 Patent, Abstract; Compl. ¶¶62-66).
Asserted Claims
Claims 1-9, 13, and/or 14. (Compl. ¶59).
Accused Features
The Amazon Fire Stick and the Toshiba Fire TV Edition are identified as infringing "media player" devices whose combination of circuits and controllers are alleged to perform the patented functions when playing content with the X-Ray feature. (Compl. ¶¶61-66).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Amazon's "X-Ray for Movies and TV Shows" feature ("X-Ray"), the "Amazon Fire Devices" (including Fire TV Stick, Fire TV Cube, Fire tablets, and third-party "Fire Edition" Smart TVs), the "Amazon Video App," and other "Amazon-Enabled Devices" capable of running the app or accessing Amazon's video service via a web browser. (Compl. ¶¶12, 13, 15).
Functionality and Market Context
The X-Ray feature allows a user watching a movie or TV show ("main Amazon Video Content") to access supplemental information such as "actor bios, videos, behind the scene info, trivia and other content." (Compl. ¶12). After viewing the X-Ray content, the user can then "resume watching the main content where the viewer left off." (Compl. ¶12). The complaint alleges that this functionality is available on a wide array of Amazon-branded and third-party devices distributed throughout the United States, including within the judicial district. (Compl. ¶¶4, 13, 15). The complaint also alleges, on information and belief, that these devices allow users to control content selection through voice commands. (Compl. ¶16).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’158 Patent Infringement Allegations
| Claim Element (from Independent Claim 37) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a plurality of segments of the Grand Tour content having a temporal flow from the first terminus to the second terminus of the segments... | The Amazon Fire Stick with the Amazon Video App was configured to provide a plurality of segments of the "Grand Tour" television series. | ¶23a | col. 7:42-49 |
| playing the at least one segment of the Grand Tour content with the temporal flow | The Fire Stick was configured to play at least one segment of the "Grand Tour" content. | ¶23b | col. 7:50-51 |
| determine prior to reaching the second terminus of the segment whether a content expansion using X-Ray was desired | The Fire Stick was configured to determine whether a content expansion using X-Ray was desired before the end of the segment. | ¶23b | col. 7:51-53 |
| played the expansion segment if the content expansion was desired, where there was an additional link from the expansion segment to the continuing segment...such that the continuing segment was played after the expansion segment | If X-Ray was desired, the Fire Stick played the expansion segment and then linked back to the continuing "Grand Tour" content. | ¶23b | col. 7:53-61 |
| In playing the segments..., the Amazon Fire Stick...was also configured to highlight an expansion cue corresponding to one of the expansion links...wherein the expansion segment cue is one of a plurality of expansion cues in an expansion cue container. | The Fire Stick was configured to highlight an X-Ray cue, which is one of multiple cues available in an "expansion cue container." | ¶23c | col. 8:12-19 |
| determine...whether a content expansion was desired by, at least in part, determining whether the expansion segment cue is selected | The Fire Stick determines if an expansion is desired by determining if the user selected the X-Ray cue. | ¶23c | col. 8:15-18 |
’379 Patent Infringement Allegations
| Claim Element (from Independent Claim 21) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| begin receiving a main content continuous play media stream...comprising a stream of audio, video and/or still image(s); | The Amazon Fire Stick is capable of causing the device to begin receiving a main content stream of the "Grand Tour" series. | ¶36a | col. 27:54-57 |
| generate a signal to play a first subset of the main content...wherein a highlighted discernible entity is presented...as a visual expansion cue that invites a user to elect insertion of an expansion... | The Fire Stick generates a signal to play the "Grand Tour" stream while presenting a highlighted entity as a visual expansion cue for X-Ray content. | ¶36b | col. 27:58-65 |
| wherein the visual expansion cue is one of a plurality of expansion cues that are presented simultaneously in a visually distinguished subset of the first visual display space... | The X-Ray visual expansion cue is one of multiple cues presented simultaneously in a distinct area of the screen. | ¶36b | col. 27:65-28:2 |
| determine...whether there is user input electing an expansion, wherein electing an expansion does not necessitate pushing of a physical button; | The Fire Stick determines if a user has elected an expansion, with the complaint alleging this does not require a physical button push. | ¶36c | col. 28:3-5 |
| if user input electing an expansion is detected...establish a resume point as a landing offset...fetch the expansion...generate a signal to play the expansion... | If user input is detected, the Fire Stick establishes a resume point, fetches the X-Ray content, and plays it. | ¶36e | col. 28:11-20 |
Identified Points of Contention
- Scope Questions: The patents describe a system of discrete, linked "segments" with defined start and end points. A potential issue is whether Amazon's dynamically generated X-Ray overlays, which provide supplemental data about a given scene, meet the definition of a playable "expansion segment" with its own "temporal flow" as contemplated by the patent claims.
- Technical Questions: Claim 21 of the ’379 patent requires that a user's election of an expansion "does not necessitate pushing of a physical button." The complaint alleges this functionality exists based on "information and belief," including via voice commands (Compl. ¶¶16, 36c). The case may require evidence demonstrating how the accused devices' standard operation allows for such non-button selection of the X-Ray feature to meet this limitation.
V. Key Claim Terms for Construction
The Term: "segment"
- Context and Importance: This term is foundational to the patented architecture. The outcome of the case may depend on whether the primary video stream and the X-Ray content in Amazon's service are found to be structured as discrete, linkable "segments."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification defines "Continuous play media" broadly and states that an aspect of the invention is a method for playing a "stored content providing a plurality of segments which collectively comprise the stored content." (’158 Patent, col. 7:42-45). This could support an interpretation that any divisible portion of a media file or stream constitutes a segment.
- Evidence for a Narrower Interpretation: The detailed description and figures illustrate a highly structured data model where segments are defined by descriptors containing a first terminus, second terminus, a continuity link, and an expansion link pointer. (’158 Patent, Fig. 9A; col. 19:35-51). This suggests a narrower definition requiring this specific linking and data structure, which may not be present in a streamed overlay system.
The Term: "expansion cue container" (’158 Patent, Claim 37)
- Context and Importance: The infringement theory for claim 37 requires that the accused "expansion cue" be part of a "plurality of expansion cues in an expansion cue container." (Compl. ¶23c). The viability of this infringement theory depends on whether Amazon's X-Ray user interface can be characterized as having such a "container."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Practitioners may argue the term should be construed functionally to mean any user interface element that groups or presents multiple, selectable expansion options.
- Evidence for a Narrower Interpretation: The specification's figures depict a literal visual "container" from which cue objects are moved or selected. (’158 Patent, Figs. 5A-5E). This could support an argument that the claim is limited to this specific visual metaphor and does not read on a simple list or menu of options.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Amazon encourages and instructs end users to use the infringing X-Ray feature. (Compl. ¶¶26, 39, 52). Contributory infringement is based on allegations that the X-Ray feature is especially made and adapted for infringing the patents and is not a staple article of commerce with substantial non-infringing uses. (Compl. ¶¶29, 42, 55).
- Willful Infringement: The complaint alleges willful infringement based on Defendant’s alleged continuation of infringing activities after receiving actual notice of the patents-in-suit and the infringement allegations on or about June 2, 2017. (Compl. ¶¶17, 28, 41, 54).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the patent term "segment", which is described in the context of discrete, linkable portions of stored media, be construed to cover the relationship between a primary streaming video and the dynamically-generated, overlaid data of the accused "X-Ray" feature?
- A key evidentiary question will be one of technical operation: Does the accused system's user interface meet specific claim limitations, such as the requirement in the '379 patent for selecting an expansion "without... pushing of a physical button," and what factual evidence beyond "information and belief" will be presented to support this allegation?
- A central question of claim interpretation will arise from the prosecution history of the ’226 patent: How will the disclaimer of independent claims 1 and 7 following an IPR proceeding impact the construction and asserted scope of the remaining dependent and method claims of that patent, as well as potentially related terms across the entire asserted patent family?