DCT

2:14-cv-00160

Vidangel LLC v. ClearPlay Inc

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: VidAngel LLC (Utah)
- Defendant: ClearPlay Inc. (Delaware)
- Plaintiff’s Counsel: LEE TRAN LIANG & WANG LLP
Case Identification: 2:14-cv-00160, N.D. Cal., 12/30/2013
Venue Allegations: Venue is alleged to be proper in the Northern District of California on the basis that Defendant ClearPlay is subject to personal jurisdiction in the district, where it has allegedly conducted substantial business. Plaintiff VidAngel also alleges it conducts substantial business in the district.
Core Dispute: Plaintiff seeks a declaratory judgment that its cloud-based software for filtering streaming video does not infringe, and that the claims are invalid, for seven U.S. patents owned by Defendant related to methods for filtering multimedia content.
Technical Context: The technology at issue involves systems and methods for filtering objectionable content (e.g., violence, profanity) from movies and other media, enabling customized playback based on user preferences.
Key Procedural History: The action follows pre-suit communications initiated by ClearPlay. The complaint references a November 25, 2013 letter from ClearPlay to VidAngel that identified the patents-in-suit. Following a meeting on December 21, 2013, ClearPlay allegedly stated its intent to "stop VidAngel from entering the market" and that it would not license its intellectual property, creating the basis for the declaratory judgment action.

Case Timeline

Date	Event
2000-10-23	Priority Date for ’799, ’383, ’784, ’318, ’970 Patents
2004-10-20	Priority Date for ’021 Patent
2005-01-05	Priority Date for ’282 Patent
2005-05-03	U.S. Patent No. 6,889,383 Issues
2005-05-24	U.S. Patent No. 6,898,799 Issues
2009-04-28	U.S. Patent No. 7,526,784 Issues
2009-06-02	U.S. Patent No. 7,543,318 Issues
2009-08-18	U.S. Patent No. 7,577,970 Issues
2011-07-05	U.S. Patent No. 7,975,021 Issues
2012-02-14	U.S. Patent No. 8,117,282 Issues
2013-11-25	ClearPlay sends letter to VidAngel identifying patents
2013-12-21	VidAngel launches its software product
2013-12-21	Meeting between VidAngel and ClearPlay representatives
2013-12-23	ClearPlay states intent to "stop VidAngel"
2013-12-30	Complaint for Declaratory Judgment filed

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

U.S. Patent No. 6,898,799 - "Multimedia Content Navigation and Playback" (Issued May 24, 2005)

The Invention Explained

Problem Addressed: The patent’s background section describes prior art methods for filtering objectionable multimedia content as inefficient and limited because they required altering the original media source (e.g., editing videotape) or relied on producer cooperation to create multiple versions on a single medium (e.g., DVD) ('799 Patent, col. 1:40-51, col. 3:34-44). It specifically notes that external indexes are unable to effectively manage playback latency because they can only interact with position codes at the end of the decoding process ('799 Patent, col. 3:17-29).
The Patented Solution: The invention discloses a filtering process that operates on the "output side of a multimedia decoder" ('799 Patent, Abstract). A "navigator" module monitors the real-time playback position (e.g., a time code) of the content after it has been read from the source. This position is compared against a set of "navigation objects," which are data structures defining a start time, a stop time, and a specific filtering action (e.g., "skip" or "mute") ('799 Patent, col. 4:44-54; Fig. 3A). When the playback position enters a segment defined by a navigation object, the navigator instructs the decoder to perform the specified action, thereby filtering the content before it is presented to the user without altering the original source media ('799 Patent, col. 5:4-24).
Technical Importance: This approach decouples the filtering mechanism from the content source, enabling third parties to create and apply filters to standard, commercially available media like DVDs after distribution ('799 Patent, col. 4:39-44).

Key Claims at a Glance

The complaint seeks a declaratory judgment regarding infringement of one or more unspecified claims of the ’799 Patent (Compl. ¶¶27, 29). Independent claim 1 is representative of the invention's core method.
Essential elements of independent claim 1 include:
- Creating an "object store" with "navigation objects," where each object defines a start position, stop position, and a filtering action.
- Loading the object store into the memory of a consumer computer system.
- Decoding multimedia content on the consumer system while continuously updating a "position code."
- Continuously monitoring the position code to determine if it falls within the start and stop positions of a navigation object.
- When the position code falls within a navigation object, "activating the filtering action" to exclude that portion of content from being played at the output device.

U.S. Patent No. 6,889,383 - "Delivery of Navigation Data for Playback of Audio and Video Content" (Issued May 3, 2005)

The Invention Explained

Problem Addressed: The patent addresses the same general problem as the ’799 Patent: the difficulty of filtering objectionable content from pre-existing media. It notes that requiring producers to author multiple versions of content on a single source medium involves significant time, cost, and licensing hurdles for compression and copy-protection technologies, limiting widespread adoption ('383 Patent, col. 3:46-4:6).
The Patented Solution: The invention describes a client-server architecture for providing filtering data. A central "server system" creates and stores the "navigation objects" ('383 Patent, Abstract). A "consumer system" (e.g., a user's media player) requests these navigation objects from the server, typically over a communication link like the Internet, and then uses them to perform the filtering locally as described in the ’799 patent ('383 Patent, col. 4:66-5:4; Fig. 3C). This enables a service model where filtering instructions can be created and distributed on demand, separate from the content media itself ('383 Patent, Fig. 7).
Technical Importance: This method allows for the creation of a scalable, service-based ecosystem for content filtering, where a third party can provide updated filters for new and existing media titles to a large user base without redistributing physical media ('383 Patent, col. 4:55-5:4).

Key Claims at a Glance

The complaint seeks a declaratory judgment regarding infringement of one or more unspecified claims of the ’383 Patent (Compl. ¶¶38, 40). Independent claim 1 is representative of the server-side method.
Essential elements of independent claim 1 include:
- In a "server system," creating an "object store" containing navigation objects.
- Receiving a request for one or more navigation objects from a "consumer system."
- In response to the request, retrieving the navigation objects from the object store.
- "Sending the one or more navigation objects to the consumer system for processing," which allows the consumer system to filter the multimedia content.

Multi-Patent Capsule: U.S. Patent No. 7,526,784

Patent Identification: U.S. Patent No. 7,526,784, "Delivery of Navigation Data for Playback of Audio and Video Content," issued April 28, 2009 (Compl. ¶15).
Technology Synopsis: This patent relates to the client-server architecture described in the ’383 patent, focusing on methods for a server to provide filtering instructions ("navigation objects") to a consumer device over a network for playback modification.
Asserted Claims: The complaint does not specify asserted claims (Compl. ¶49).
Accused Features: The accused features are VidAngel's "cloud-based software solution for filtering streaming video" (Compl. ¶¶3, 12).

Multi-Patent Capsule: U.S. Patent No. 7,543,318

Patent Identification: U.S. Patent No. 7,543,318, "Delivery of Navigation Data for Playback of Audio and Video Content," issued June 2, 2009 (Compl. ¶16).
Technology Synopsis: This patent continues the subject matter of the ’383 and ’784 patents, describing a server-based system for creating and distributing navigation objects that instruct a consumer device on how to filter multimedia content during playback.
Asserted Claims: The complaint does not specify asserted claims (Compl. ¶60).
Accused Features: The accused features are VidAngel's "cloud-based software solution for filtering streaming video" (Compl. ¶¶3, 12).

Multi-Patent Capsule: U.S. Patent No. 7,577,970

Patent Identification: U.S. Patent No. 7,577,970, "Multimedia Content Navigation and Playback," issued August 18, 2009 (Compl. ¶17).
Technology Synopsis: This patent relates to the consumer-side filtering system described in the ’799 patent, wherein a local "navigator" uses filtering instructions to monitor and modify the playback of multimedia content from a source like a DVD.
Asserted Claims: The complaint does not specify asserted claims (Compl. ¶71).
Accused Features: The accused features are VidAngel's filtering software and services (Compl. ¶¶3, 12).

Multi-Patent Capsule: U.S. Patent No. 7,975,021

Patent Identification: U.S. Patent No. 7,975,021, "Method and User Interface for Downloading Audio and Video Content Filters to a Media Player," issued July 5, 2011 (Compl. ¶18).
Technology Synopsis: This patent focuses specifically on the process and user interface by which a media player downloads content filters from a remote server, including establishing a connection and managing the received filter data.
Asserted Claims: The complaint does not specify asserted claims (Compl. ¶82).
Accused Features: The accused features are VidAngel's methods for providing its filtering service to users of streaming video (Compl. ¶¶12, 21).

Multi-Patent Capsule: U.S. Patent No. 8,117,282

Patent Identification: U.S. Patent No. 8,117,282, "Media Player Configured to Receive Playback Filters from Alternative Storage Mediums," issued February 14, 2012 (Compl. ¶19).
Technology Synopsis: This patent describes a media player with at least two memory interfaces: one for the primary media (e.g., a DVD drive) and another for receiving playback filters from a separate source, such as a USB drive or flash memory card.
Asserted Claims: The complaint does not specify asserted claims (Compl. ¶93).
Accused Features: The accused features are VidAngel's filtering solution, which provides filters separate from the streaming content source (Compl. ¶¶12, 21).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentality as VidAngel's "filtering software for streaming video," which it also describes as a "cloud-based software solution" (Compl. ¶¶3, 12).

Functionality and Market Context

The complaint provides limited technical detail, but quotes a letter from ClearPlay that describes the product as a "browser app plugin that would filter out undesirable content on streaming video (Google Play, YouTube, etc.)" (Compl. ¶21). The complaint notes the "anticipated launch" of this service, positioning VidAngel as a new entrant in the content filtering market that ClearPlay allegedly seeks to block (Compl. ¶¶6, 11, 23).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint is for declaratory judgment of non-infringement and does not contain affirmative infringement allegations or claim charts mapping product features to claim elements. Accordingly, a claim chart summary cannot be constructed from the complaint.

Identified Points of Contention

For the ’799 Patent: A likely point of contention will be the location of key claimed functions. Claim 1 requires several steps to occur on the "consumer computer system," including decoding content, monitoring a position code, and activating a filtering action. The description of VidAngel's product as a "cloud-based software solution" raises the question of whether some of these functions are performed remotely on VidAngel's servers rather than on the consumer's device, which may place its operation outside the literal scope of the claim.
For the ’383 Patent: A central issue may be the nature of the data transmitted between the server and consumer. Claim 1 requires the "server system" to be "sending the one or more navigation objects to the consumer system for processing." The dispute may focus on whether VidAngel's cloud servers transmit discrete data structures corresponding to "navigation objects," or if they employ a different mechanism, such as modifying the video stream directly in the cloud before it reaches the consumer.

V. Key Claim Terms for Construction

For U.S. Patent No. 6,898,799:

The Term: "consumer computer system"
Context and Importance: This term appears repeatedly in independent claim 1 and defines the location where the core filtering process (decoding, monitoring, and activating) occurs. Its construction will be critical in determining whether a distributed, cloud-based architecture infringes a claim rooted in the context of a local device like a personal computer or DVD player.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the system being embodied in a "variety of computerized systems," including "servers, personal computers, television systems, and audio systems" ('799 Patent, col. 6:21-24). This language may support a more flexible definition of the system's boundaries.
- Evidence for a Narrower Interpretation: The detailed description and figures consistently depict a self-contained system where the content source, decoder, navigator, and output device are located at the consumer's premises ('799 Patent, Fig. 3A). The claim's recitation of decoding and monitoring occurring "on the consumer computer system" could be interpreted to require all critical processing to be local.

For U.S. Patent No. 6,889,383:

The Term: "navigation objects"
Context and Importance: This term defines the data that is delivered from the server to the consumer system. The infringement analysis for claim 1 will hinge on whether the data transmitted by VidAngel's service corresponds to the claimed "navigation objects."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states there is "no particular limitation on the format of the navigation objects" ('383 Patent, col. 4:50-51), which may support a broad construction covering any data that conveys filtering instructions.
- Evidence for a Narrower Interpretation: The specification provides a specific example of a navigation object as a data structure containing a "start position, a stop position, and a filtering action" ('383 Patent, Abstract; Fig. 3C, element 320c). This explicit definition could be used to argue for a narrower construction that requires the transmission of discrete, structured data packets rather than just a modified media stream or high-level commands.

VI. Other Allegations

The complaint is a declaratory judgment action and does not contain allegations of indirect or willful infringement. It seeks a declaration that VidAngel is not liable for any form of infringement (Compl. ¶¶29, 40).

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

A central issue will be one of architectural scope: How does VidAngel's "cloud-based" and "browser app plugin" architecture map onto claims written for systems based on local media playback (as in the ’799 Patent) or a client-server model for delivering discrete data objects for local processing (as in the ’383 Patent)? Does filtering logic executed on a remote server fall within the scope of claims directed to processing on a "consumer computer system"?
A key evidentiary question will be one of technical implementation: Does VidAngel's service operate by "sending...navigation objects" to a client for local filtering, or does it utilize an alternative mechanism, such as modifying the video stream in the cloud prior to delivery to the user, that may not meet the literal claim limitations?
A foundational issue for all asserted patents will be validity: VidAngel seeks a declaration that all asserted claims are invalid. The court will need to consider whether the claimed methods for filtering content on the decoder's output side and delivering filtering data from a server were novel and non-obvious in the early 2000s, given the state of the art in digital media processing and client-server systems.