DCT
2:20-cv-00292
Voicescom Inc v. Mediazam LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Voices.com Inc. (Canada)
- Defendant: MediaZam LLC (Wisconsin)
- Plaintiff’s Counsel: Godfrey & Kahn, S.C.; Hahn Loeser & Parks LLP
- Case Identification: 2:20-cv-00292, E.D. Wis., 02/21/2020
- Venue Allegations: Venue is alleged to be proper as Defendant MediaZam LLC resides and/or maintains a regular and established place of business in the Eastern District of Wisconsin.
- Core Dispute: Plaintiff Voices.com seeks a declaratory judgment that its online voice-over talent marketplace does not infringe U.S. Patent No. 7,421,391 and that the patent is invalid.
- Technical Context: The technology relates to online platforms for managing, searching, and presenting audio samples from voice-over talent, a key function in the digital advertising and media production industries.
- Key Procedural History: The action arises from pre-suit correspondence in which Defendant MediaZam accused Voices.com of infringing the patent-in-suit and threatened litigation. The complaint highlights the patent's prosecution history, noting that the applicant amended the claims to add the term "audio reads" to overcome a prior art rejection, a fact that may be central to claim construction.
Case Timeline
| Date | Event |
|---|---|
| 2003-09-08 | '391 Patent Priority Date |
| 2004-02-18 | Launch of Interactive Voices (predecessor to Voices.com) |
| 2004-04-19 | Interactive Voices issues press release on its business model |
| 2004-09-07 | '391 Patent application filed |
| 2006-05-01 | Voices.com launches rebranded website |
| 2008-02-21 | Patent examiner issues rejection of '391 Patent application claims |
| 2008-05-19 | Applicant amends claims to overcome rejection |
| 2008-09-02 | '391 Patent Issue Date |
| 2018-12-19 | MediaZam sends letter to Voices.com alleging infringement |
| 2020-02-21 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,421,391 - “System and Method for Voice-Over Asset Management, Search and Presentation”
- Issued: September 2, 2008.
The Invention Explained
- Problem Addressed: The patent describes the process for producers to find voice-over talent as a "tedious and frustrating process" involving listening to lengthy, linear "demo reels" on physical media or online, which often contained performances irrelevant to the specific project needs (’391 Patent, col. 2:6-19).
- The Patented Solution: The invention proposes a system that separates a talent's demo reel into individual, discrete "reads" (’391 Patent, Fig. 3). Each read is then associated with a detailed "read profile" containing searchable metadata describing its characteristics (e.g., pace, pitch, vocal persona) (’391 Patent, Abstract; col. 4:51-65). This allows a producer to perform a granular, criteria-based search for a specific type of performance, rather than searching through entire reels of irrelevant content.
- Technical Importance: This read-centric approach was designed to shift the industry paradigm from searching for a talent to searching for a specific read, thereby increasing the efficiency and precision of the talent selection process (’391 Patent, col. 4:45-50).
Key Claims at a Glance
- The complaint states that Defendant MediaZam has asserted infringement of at least independent claims 20, 33, 34, 36, and 42 of the ’391 Patent (Compl. ¶28). The analysis below focuses on claim 20 as a representative system claim.
- Independent Claim 20 recites:
- profiling audio reads to classify each of said audio reads for storage and query retrieval;
- associating the audio reads with their corresponding profile data created in the profiling step to create read profiles;
- inputting talent information relating to said audio reads;
- storing said read profiles and said talent information in a database;
- allowing a user to enter search parameters for retrieving audio reads;
- matching said search parameters with said read profiles;
- displaying matched audio reads;
- enabling the user to preview said matched audio reads in substantially real-time;
- allowing the user to select a preferred audio read to request associated talent information; and
- revealing talent information associated with the preferred audio read to the user.
- The Plaintiff seeks a declaration that it does not infringe any claim of the patent (Compl., Prayer for Relief ¶A).
III. The Accused Instrumentality
Product Identification
The Voices.com website and its associated online marketplace services for voiceover talent (Compl. ¶6).
Functionality and Market Context
- The complaint describes the Voices.com service as an online platform that "upend[ed] the traditional model" of searching for voice talent (Compl. ¶20). Instead of users searching through libraries of pre-recorded samples, the platform enables businesses to post "projects" with specific scripts and invite voice talent to submit custom auditions for that specific project (Compl. ¶¶17, 20).
- The complaint alleges this model is fundamentally different from that described in the patent, as it is based on soliciting new, project-specific performances rather than searching existing, pre-recorded demo reel segments (Compl. ¶¶17, 31).
- The complaint asserts that Voices.com is the "world's leading provider of online marketplace services for connecting businesses with professional voice talent, having more than 50% of the market" (Compl. ¶19).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint seeks a declaratory judgment of non-infringement. The core of its argument is that its service operates differently from the patented method and does not meet key claim limitations.
’391 Patent Infringement Allegations
| Claim Element (from Independent Claim 20) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| profiling audio reads to classify each...for storage and query retrieval | The complaint argues that Voices.com does not deal with "audio reads" as that term is used in the patent, because its platform is based on single-performance custom auditions, not segments derived from a larger demo reel. Its business model allegedly does not involve arranging demo reels into individual audio reads. | ¶31 | col. 4:51-65 |
| associating the audio reads with their corresponding profile data...to create read profiles | The complaint alleges that since Voices.com does not create "audio reads" in the patented sense, it does not perform the subsequent step of associating them with a profile to create a "read profile." The platform's core function is project posting and custom audition submission, not profiling of pre-existing reads. | ¶31 | col. 11:21-34 |
Identified Points of Contention
- Scope Questions: A central dispute will be the definition of "audio reads." The complaint argues that prosecution history limits this term to segments of a traditional, multi-performance "demo reel" (Compl. ¶22). The court will have to determine if this term can be construed more broadly to cover single-take, custom auditions submitted for a specific project, or if prosecution history estoppel applies.
- Technical Questions: A key factual question is whether the Voices.com platform, which solicits project-specific auditions, performs the functions of "profiling," "associating," and "matching" in the manner required by the claims. The complaint suggests a fundamental mismatch between its operational model (soliciting new, custom assets) and the patent's model (searching and classifying existing assets) (Compl. ¶¶ 17, 20, 31).
V. Key Claim Terms for Construction
- The Term: "audio reads"
- Context and Importance: The construction of this term appears to be the central issue in the non-infringement dispute. If the term is narrowly defined to mean only segments derived from a traditional demo reel, as argued by Voices.com, then a system based on single, custom auditions may fall outside the scope of the claims. Practitioners may focus on this term because the complaint explicitly cites applicant statements made during prosecution to secure the patent, which could create a powerful argument for a narrow construction (Compl. ¶22).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party seeking a broader definition might argue that the term's plain meaning is not explicitly limited in the claims themselves and that the patent's abstract describes separating a reel as just one way to obtain "individual reads" (’391 Patent, Abstract).
- Evidence for a Narrower Interpretation: The complaint points to what may be a significant prosecution history disclaimer. It alleges the applicant, to overcome a rejection, distinguished the invention by stating that "audio reads occur within demo reels" and are "derived from a longer recording including multiple different pieces of copy spliced together" (Compl. ¶22). Such statements made to the patent office to secure allowance can be used to limit the scope of the claims.
VI. Other Allegations
- Indirect Infringement: The complaint preemptively argues that there can be no indirect infringement (induced or contributory) because there is no direct infringement by either Voices.com or its customers. This follows the legal principle that indirect infringement is contingent upon an underlying act of direct infringement (Compl. ¶32).
- Willful Infringement: As a declaratory judgment action filed by the accused infringer, the complaint does not contain an allegation of willfulness. However, it establishes that MediaZam provided notice of the alleged infringement via a letter dated December 19, 2018, which would be relevant to any future willfulness claim by MediaZam (Compl. ¶24).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and prosecution history: can the term "audio reads" be limited by the applicant's statements during prosecution to mean only segments of a traditional, spliced demo reel? The court's ruling on whether prosecution history estoppel applies will likely be a dispositive factor in the infringement analysis.
- A key evidentiary question will be one of operational equivalence: does the Voices.com platform, which operates on a model of soliciting new, custom auditions for specific projects, perform the claimed steps of "profiling," "associating," and "matching" existing assets as described in the ’391 Patent? The case may turn on whether the two systems are found to be fundamentally different in their technical operation or merely different commercial implementations of the same underlying patented process.