On April 22, 2011, Walker Digital, LLC filed another patent infringement suit against Apple, Inc. in the District of Delaware.  The asserted patent in this case is:

"U.S. Patent No. 6,263,505 (“the ’505 patent”), entitled “System and Method for Supplying Supplemental Information for Video Programs” to Jay S. Walker, James A. Jorasch, Robert R. Lech and Thomas M. Sparico, who assigned their rights and interests in the ’505 patent to Walker Digital."

Defendants include Apple, Digimarc Corporation, The Nielsen Company, The Walt Disney Company, The Weather Channel, and TVaura Mobile LLC.

Regarding Apple, the Complaint asserts:

Upon information and belief, Defendant Apple is infringing (literally and/or under the doctrine of equivalents) the ’505 patent in this District and throughout the United States by, among other things, using, an iPad with installed application that is covered by, without limitation, claim 7 of the ’505 patent. By way of example and without limitation, Defendant uses an iPad with installed application, such as “From the Edge” or “ABC’s Grey’s Anatomy Sync,” to receive a request from a viewer for supplemental information related to a video program (such as photos, behind the scenes video and/or character information), receive synchronization information relating to the video program, process the request for the supplemental information, and transmit the synchronized supplemental information using the synchronization information.

It seems clear that the iPad by itself would not infringe.  The accused Grey's Anatomy Sync app uses audio from the television program to provide synchronized information on the iPad.  The app is published by ABC Digital, which would explain the inclusion of The Walt Disney company as a defendant.

App Store screen shot of "Grey's Anatomy Sync" app.

The "From the Edge" app appears to use the same app framework and is provided by co-defendant The Weather Channel.

App Store screen shot of the "From the Edge" app.

TVaura LLC and TVaura Mobile LLC are joint ventures between Nielsen and Digimarc, the other defendants.

It is notable that both of the apps are free downloads.  It would be fascinating to see Walker Digital's business case for filing this suit, especially the modeling of expected damages that would justify the expense.

 

Claim 7, for reference:

7. A method for providing supplemental information using a data processing apparatus including a CPU and a storage device operatively connected to the CPU and containing a program adapted to be executed by the CPU for processing a request for the supplemental information related to a video program and providing the requested supplemental information, said method comprising the steps of:

receiving a request for the supplemental information related to the video program;

receiving synchronization information related to the video program;

processing the request for the supplemental information by having the CPU in the data processing apparatus execute the program;

synchronizing the requested supplemental information to the video program using the synchronization information; and

transmitting the requested supplemental information.

 

Previous coverage:

• Walker Digital: The Buried Lede
• Walker Digital v. Amazon, Apple et al. - '942 Product Substitution Complaint
• Walker Digital v. Apple et al. - '014 Navigation Complaint
• Walker Digital Files 15 Suits, 100+ Defendants including Apple

Patent suits from an NPE are not a show of strength.  They are a sign of failed licensing.

Many of the articles covering Walker Digital's filing of fifteen patent infringement suits against 100+ defendants paint the action as "aggressive assertion," or a show of strength.

Looking at it a different way, each assertion of each patent against each defendant is likely an indication of a failed attempt at licensing.  As Walker's own press release puts it:

Commenting on recent developments, Ellenthal stated, “We are disappointed that after reaching out to so many companies in an effort to secure reasonable licenses, we were consistently told that without litigation our requests would not be taken seriously.

One translation: Major companies are now saying, "If you really think your patent is valid, and you really think we infringe, step up, put your money where your mouth is, and file a suit.  We are not just going to hand you cash."

It seems that the rising number of parties attempting to extract revenue for licenses or protection have produced a fatigue in the industry.  With the higher bar for injunctions, the CAFC move towards sanity in damage awards, and the rising effectiveness of reexams, motivation to settle has diminished.  The clear impression from Walker's press release is that their ability to obtain licensing revenue without litigation has diminished, and generating new revenue will require more expense.

What remains to be seen is whether an ongoing viable business model remains with these higher assertion costs.

 

Previous coverage:

• Walker Digital v. Amazon, Apple et al. - '942 Product Substitution Complaint
• Walker Digital v. Apple et al. - '014 Navigation Complaint
• Walker Digital Files 15 Suits, 100+ Defendants including Apple

As mentioned earlier, on April 11, 2011, Walker Digital, LLC filed a number complaints for patent infringement in the US District Court for the District of Delaware.

In another of the complaints involving Apple, the patent at issue is U.S. Patent No. 7,236,942, Pre-sale data broadcast system and method.  [Full Complaint]  Listed inventors are Jay. S Walker himself, Daniel E. Tedesco, and Magdalena Mik.  The application was filed December 28, 1998, though it is a CIP of two other applications, one dating to December 19, 1997.

Defendants are Amazon, Apple, B&N, Best Buy, Bloomingdales, Dell, Ebay, Expedia, Gap, GSI Commerce Solutions, Macy's, Microsoft, NBA Media Ventures, Nieman Marcus, Nordstrom, Overstock, Saks Direct, Target, Verizon, WalMart, and others.

Agility IP Law, LLC attorneys including James C. Otteson are listed Of Counsel for Walker Digital.  Local counsel are Richard D. Kirk and Stephen B. Brauerman of Bayard, P.A.

 

Regarding Apple:

Upon information and belief, Defendant Apple is infringing (literally and/or under the doctrine of equivalents) the ‘942 patent in this District and throughout the United States by, among other things, making and using systems for promoting a sale of a substitute product, including iTunes, covered by, without limitation, claims 1, 12 and 13 of the ‘942 patent. By way of example and without limitation, Defendant receives transaction data from a consumer regarding an original product, such as DVD movie, through iTunes, transmits that data to its server to determine a possible substitute product, such as a different DVD movie, offers the substitute product to the consumer through iTunes, consummates the sale of the original product if no information concerning a substitute product offering is received or the consumer declines the substitute offering, and consummates the sale of the substitute product upon acceptance of the offer of the substitute product by the consumer.

 

Claim 1, for reference:

1. A method for promoting a sale of a substitute product, comprising:

• receiving transaction data regarding an original product presented for purchase by a consumer at a point of sale terminal;
• transmitting said transaction data to a remote server of a manufacturer during a transaction session for determination of a possible substitute product to be offered to said consumer;
• upon receipt of information regarding said substitute product from said remote server, offering said substitute product to said consumer before the transaction session terminates;
• consummating a sale of said original product if at least one of
  
  • (a) no information regarding said substitute product is received from said remote server, and
  • (b) said consumer declines said offering; and
• consummating a sale of said substitute product upon acceptance by said consumer of said offering.

 

Previous coverage:

• Walker Digital v. Apple et al. - '014 Navigation Complaint
• Walker Digital Files 15 Suits, 100+ Defendants including Apple

As mentioned earlier, on April 11, 2011, Walker Digital, LLC filed a number complaints for patent infringement in the US District Court for the District of Delaware.

In one of the complaints involving Apple, the patent at issue is US 6,199,014, System for providing driving directions with visual cues.  Listed inventors are Jay S. Walker himself, and Toby Weir-Jones.  The application was filed December 23, 1997.  [Full Complaint]  The case number is 1:11-cv-00309.  (Apple is also a defendant in 1:11-cv-00315.   More to come.)

The defendants are Apple, BMW NA, Google, MapQuest, Mio, Tom Tom, Telenav, Bluesens Technology, NDrive, Navman Wireless Holdings, Microsoft, and Samsung Electronics USA.

SNR Denton attorneys including Matthew D. Orwig are listed Of Counsel for Walker Digital.  Local counsel are Richard D. Kirk and Stephen B. Brauerman of Bayard, P.A.

 

Regarding Apple, the Complaint states:

Upon information and belief, Defendant Apple is infringing (literally and/or under the doctrine of equivalents) the ‘014 patent by, among other things, making, using, importing, offering for sale and/or selling navigation instructions providing directions for traveling a route along with photographic representations of locations along a route, including, but not limited to, the iPhone with GPS and real time navigation directions and related products, which are covered by at least claims 1 and 4 of the ‘014 patent.

A stock iPhone does not provide this capability, to my knowledge.  Thus, it appears that running turn-by-turn software with photographic representations on the iPhone would be required for an infringement discussion to even begin.

 

Claim 1, for reference:

1. A system adapted to provide navigational instructions, the system comprising:

• a communication port adapted to:
  
  • receive signals representing location information including a starting point and a destination point; and
  • transmit the navigational instructions;
• a storage device having stored therein geographical information, photographic information, route processing instructions and photograph matching instructions, wherein:
  
  • the photographic information includes representations of photographs of actual geographic locations and photograph orientation information;
  • for each representation of a photograph, the photographic information includes coordinates of a location shown in the representation of the photograph and a direction of view of the representation of the photograph; and
  • the photograph matching instructions include instructions adapted to match coordinates of a representation of a particular photograph with a corresponding geographic location; and
• a processor connected to the storage device and adapted to:
  
  • communicate with the storage device;
  • process the location information and the geographical information in accordance with the route processing instructions to obtain a route for travel to the destination point;
  • match geographic locations along the route with the coordinates of representations of photographs thereof in accordance with the photograph matching instructions; and
  • orient the representations of photographs based on the route for travel, thereby determining the navigational instructions for traveling the route including oriented representations of photographs,
  • wherein said processor outputs the navigational instructions using said communication port, thereby providing a user with directions for traveling the route and an oriented sequence of photographic representations of the geographic locations along the route.

 

Previous coverage:

• Walker Digital Files 15 Suits, 100+ Defendants including Apple

From the press release:

Walker Digital Files Lawsuits in Patent Dispute

More Than 100 Defendants Named in 15 Suits Filed After Company Efforts Fail to Obtain Commercial Licenses

STAMFORD, Conn. & WILMINGTON, Del.--(BUSINESS WIRE)--Walker Digital, LLC announced today that it has filed suit in Delaware to stop the unauthorized use of its intellectual property rights and to recover its substantial investment in innovation. In total, 15 suits have been filed against more than 100 defendants, including Microsoft, eBay, Amazon, Facebook, WalMart, Groupon, Apple, Sony and Google.

[...]

Commenting on recent developments, Ellenthal stated, “We are disappointed that after reaching out to so many companies in an effort to secure reasonable licenses, we were consistently told that without litigation our requests would not be taken seriously. [...] Indeed, ironically and unfortunately, our efforts to avoid litigation have been met, in some cases, with lawsuits filed against us just because we sent letters asking companies whether they would be willing to license some of our patented inventions.”

[...]

I am not sure what could be considered "ironic" about a D.J. being filed against an entity seeking licensing revenue based on claims, no matter how veiled, that the other party needs a license to operate.  "Fair" is the word that actually comes to mind.

More to follow when the complaints become available.