DCT
2:16-cv-00950
Gracenote v. Sorenson Media
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Gracenote, Inc. (Delaware)
- Defendant: Sorenson Media, Inc. (Delaware)
- Plaintiff’s Counsel: Ray Quinney & Nebeker P.C.; Mayer Brown LLP
- Case Identification: 2:16-cv-00950, D. Utah, 09/12/2016
- Venue Allegations: Venue is alleged to be proper in the District of Utah because the Defendant maintains its principal place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s SPARK automatic content recognition product infringes three patents related to identifying content within data streams using fingerprinting technology and accessing associated data.
- Technical Context: The technology at issue is Automatic Content Recognition (ACR), which enables devices to identify audio or video content being played and trigger related actions or display secondary information, a foundational technology for interactive smart TV features and second-screen applications.
- Key Procedural History: The complaint alleges that the Defendant has had actual knowledge of the patents-in-suit as of the complaint's filing date, which may form the basis for an allegation of post-suit willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1997-04-15 | '192 Patent Priority Date |
| 2001-05-08 | '192 Patent Issue Date |
| 2004-08-12 | '718 and '008 Patents Priority Date |
| 2015-09-22 | '718 Patent Issue Date |
| 2016-08-09 | '008 Patent Issue Date |
| 2016-09-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,143,718 - Method and Apparatus for Selection of Content from a Stream of Data (issued Sep. 22, 2015)
The Invention Explained
- Problem Addressed: The patent addresses the difficulty of accurately selecting and replaying specific content from a broadcast stream (e.g., a TV show) when that stream is subject to unpredictable delays or interruptions by unscheduled content like commercials ('718 Patent, col. 1:26-34). Prior solutions were often inaccurate or required special data tags from the broadcaster, which might not be available ('718 Patent, col. 1:57-64).
- The Patented Solution: The invention proposes a system using two separate data streams: a "main datastream" (e.g., the high-data-rate television broadcast) and a "reference datastream" (a lower-data-rate stream containing "reference fingerprints" of the main program content, but not the commercials) ('718 Patent, col. 2:60-65). By generating "main fingerprints" from the incoming broadcast and matching them against the reference fingerprints, the system can identify and select the desired program segments for viewing or recording, while skipping the intermixed commercials for which no matching reference fingerprint exists ('718 Patent, Abstract).
- Technical Importance: This fingerprint-matching approach enables "intelligent" content selection and editing (such as commercial skipping) based on the content itself, rather than relying on potentially fallible external data like program guides or broadcaster-embedded signals ('718 Patent, col. 1:45-56).
Key Claims at a Glance
- The complaint asserts independent claims 1 (apparatus) and 14 (method) (Compl. ¶23).
- Independent Claim 1 (Apparatus) requires:
- A processor configured by a comparator unit to receive a main datastream and a reference datastream.
- The main datastream includes main content elements intermixed with inserted content elements.
- The reference datastream has a different data rate and includes reference fingerprints of the main content elements.
- The processor computes main fingerprints from the main content elements.
- A control unit selects the main content elements based on a comparison of the main and reference fingerprints.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 6,230,192 - Method and System for Accessing Remote Data Based on Playback of Recordings (issued May 8, 2001)
The Invention Explained
- Problem Addressed: The patent notes that the traditional experience of listening to a musical recording, such as on an audio CD, is passive and lacks associated interactive or visual content ('192 Patent, col. 1:24-34).
- The Patented Solution: The invention provides a system that links physical media to online content. When a user plays a recording (the primary example being an audio CD), a program on the user's computer automatically executes ('192 Patent, col. 12:56-59). This program identifies the recording, contacts a remote database to retrieve a corresponding Uniform Resource Locator (URL), and then uses that URL to fetch and display complementary content (e.g., artwork, lyrics, artist information) from the internet, synchronized with the audio playback ('192 Patent, Abstract; col. 2:6-20).
- Technical Importance: This technology created a bridge between static physical media and the dynamic, updatable content of the internet, forming the basis for "enhanced CD" and similar experiences that automatically provide context for media playback ('192 Patent, col. 2:45-57).
Key Claims at a Glance
- The complaint asserts independent claim 34 (method) (Compl. ¶23).
- Independent Claim 34 (Method) requires:
- Automatically executing a program on a local device when local data is accessed.
- Obtaining at least one URL corresponding to the local data from a remote database of identifiers and URLs.
- Obtaining remote data using the URL.
- Outputting the remote data on the local device.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule: U.S. Patent No. 9,414,008
- Patent Identification: U.S. Patent No. 9,414,008, "Method and Apparatus for Selection of Content from a Stream of Data," issued Aug. 9, 2016.
- Technology Synopsis: Belonging to the same family as the '718 patent, this invention also describes a system for processing a main data stream by using a corresponding reference stream ('008 Patent, Abstract). The reference stream contains fingerprints and associated "mark-up information" (e.g., subtitles, alternative language tracks, or menus). By matching fingerprints computed from the main stream to the reference fingerprints, the system can accurately link the main content to its corresponding mark-up information for enhanced playback ('008 Patent, col. 2:10-14).
- Asserted Claims: The complaint asserts at least claims 1-2, 5-7, 9-10, and 13-15, which includes independent claim 1 (Compl. ¶23).
- Accused Features: The complaint alleges that the SPARK product's system of using a main datastream and reference datastream to identify content and trigger an "action" infringes the patent (Compl. ¶¶ 20-22, 32).
III. The Accused Instrumentality
- Product Identification: Defendant's SPARK product (Compl. ¶18).
- Functionality and Market Context: The complaint describes the SPARK product as an "automatic content recognition platform" (Compl. ¶19). Its alleged function is to use "content fingerprinting" to analyze content being displayed to a viewer and then "take action," such as enabling targeted advertisements (Compl. ¶19). The complaint alleges the product operates by receiving a "main datastream" (e.g., program content with ads) and a "reference datastream" (containing fingerprints and timestamps) (Compl. ¶20). It is alleged to compute fingerprints from the main stream, match them to the reference fingerprints, and thereby select content or trigger associated actions, such as obtaining a URL to retrieve remote data for playback (Compl. ¶¶ 21-22).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'718 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receive a main datastream and a reference datastream, the main datastream including main content elements intermixed with inserted content elements, | The Infringing Product is alleged to operate by receiving a "main datastream" which includes "main content elements (e.g., program content) intermixed with inserted content elements (e.g., advertisements)." | ¶20 | col. 10:65-67 |
| the reference datastream having a different data rate than the main datastream and including reference fingerprints of the main content elements of the main datastream; | The complaint alleges the product also receives a "reference datastream" that "includes reference fingerprints and timestamps... has less data than the main datastream, and streams at a different data rate." | ¶20 | col. 10:1-5 |
| compute main fingerprints from at least some of the main content elements included in the main datastream; and | It is alleged that the "Infringing Product computes main fingerprints from at least some of the main content elements included in the main datastream." | ¶21 | col. 10:6-8 |
| a control unit configured to select the main content elements from the main datastream based on a comparison of the main fingerprints to the reference fingerprints. | The complaint states the product "identifies a main fingerprint that corresponds or links with a reference fingerprint" and "selects a displayed main content element based on reference fingerprints." This selection is used to perform actions, such as causing an action on a playback device. | ¶¶21-22 | col. 10:9-12 |
'192 Patent Infringement Allegations
| Claim Element (from Independent Claim 34) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| automatically executing a program on the local device when the local data is accessed, | The complaint alleges that when a "buffered portion of a broadcast feed is played, the Infringing Product automatically executes a program on the playback device." | ¶22 | col. 14:26-28 |
| to obtain at least one uniform resource locator, corresponding to the local data, from at least one database of local data identifiers and uniform resource locators... | The alleged program execution is done "to obtain at least one uniform resource locator ('URL') corresponding to the broadcast feed from a remote computer." | ¶22 | col. 14:28-34 |
| obtaining the remote data using the at least one uniform resource locator; and | The product is alleged to "obtain[] remote data from the location identified by the URL." | ¶22 | col. 14:35-37 |
| outputting at the local device the remote data obtained from the network. | The complaint states the product "outputs such data for playback on the playback device." | ¶22 | col. 14:38-39 |
- Identified Points of Contention:
- Scope Questions ('718 and '008 Patents): A central factual question will be whether the accused SPARK product's architecture uses two distinct "main" and "reference" datastreams as contemplated by the patents. The complaint makes this structural allegation (Compl. ¶20), but the actual implementation and the nature of these alleged streams will be a focus of discovery.
- Technical Questions ('718 Patent): The complaint alleges the "reference datastream" has a "different data rate" (Compl. ¶20), a specific limitation of claim 1 of the '718 patent. A technical dispute may arise over the evidence supporting this allegation and how the data rates of the alleged streams are measured and compared.
- Scope Questions ('192 Patent): The '192 patent's specification is heavily focused on triggering online content from the playback of discrete physical media like an "audio CD" ('192 Patent, col. 2:20-26). A primary legal question will be one of claim scope: whether the term "recording," as used and described in the patent, can be construed to cover a transient "buffered portion of a broadcast feed" as alleged by the Plaintiff (Compl. ¶22).
V. Key Claim Terms for Construction
For the '718 Patent:
- The Term: "reference datastream"
- Context and Importance: This term is foundational to the asserted claims of the '718 and '008 patents. The definition will be critical for determining whether the architecture of the accused SPARK product, as alleged by the complaint, falls within the scope of the claims. Practitioners may focus on this term because the entire inventive concept rests on the interaction between this stream and the "main datastream."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves do not strictly limit the format, requiring only that it has a different data rate and includes reference fingerprints ('718 Patent, col. 10:1-5). The specification further notes that the stream may be distributed via different media than the main stream, such as over the Internet ('718 Patent, col. 7:60-64).
- Evidence for a Narrower Interpretation: The specification describes specific embodiments where the reference stream is either a "low (temporal or spatial) resolution version of the main stream without commercials" or a stream that "contains the reference fingerprints directly" ('718 Patent, col. 3:5-13). A party may argue the term should be limited to these disclosed examples.
For the '192 Patent:
- The Term: "recording"
- Context and Importance: The infringement theory for the '192 patent depends on construing "recording" to include a "broadcast feed" (Compl. ¶22). Given the patent's focus on physical media, the construction of this term may be dispositive of infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims use the general term "recording" without specifying a particular format like "compact disc." ('192 Patent, col. 12:56). Dependent claim 5, for example, refers to an "electronic file of digitally encoded audio," which could be argued to encompass a buffered stream ('192 Patent, col. 16:13-15).
- Evidence for a Narrower Interpretation: The patent's background, summary, and detailed description consistently frame the invention around solving problems associated with physical "musical recordings," with "audio CD" used as the primary and repeated example ('192 Patent, col. 1:18-23; col. 2:20; Abstract). An argument could be made that the term's meaning is limited by this consistent context.
VI. Other Allegations
- Willful Infringement: The complaint seeks treble damages based on willful infringement (Prayer for Relief, ¶4). The factual basis for this claim appears to be post-suit conduct, as the complaint alleges Defendant has had "actual knowledge of the '718 Patent, '192 Patent and '008 Patent since at least the filing of this complaint" (Compl. ¶17).
VII. Analyst’s Conclusion: Key Questions for the Case
- An Evidentiary Question of System Architecture: Can the Plaintiff substantiate its allegation that the accused SPARK product operates on the specific two-stream ("main" and "reference") architecture required by the '718 and '008 patents, including the claimed "different data rate," or will discovery reveal a fundamentally different technical design?
- A Definitional Question of Technological Evolution: Will the term "recording" from the '192 patent, which is described in the context of 1990s-era physical CD media, be construed broadly enough to read on the identification of a modern, transient "broadcast feed" as alleged in the complaint? The outcome of this claim construction issue may determine the viability of the infringement allegations for that patent.