MONKEYmedia patent suit against movie studio defendants continues after settlements with Apple, Sony

In July 2010, private intellectual property licensing firm MONKEYmedia filed a lawsuit for patent infringement in the U.S. District Court for the Western District of Texas (W.D. Tex.). The initial suit targeted American consumer tech giant Apple Inc. (NASDAQ:AAPL) and targeted Apple’s use of user interfaces for document summarizations, video players and RSS readers which are capable of displaying multiple versions of text and/or audiovisual content.

MONKEYmedia’s complaint included five patents-in-suit:

• U.S. Patent No. 6177938, titled Computer User Interface with Non-Salience Deemphasis. It claimed a computerized system including a computer with a means for selectively shrinking the display of a first segment of objects to emphasize a second segment.
• U.S. Patent No. 6219052, same title as above. It claims a similar computerized system including a means for transforming a displayed object into shrunken and non-shrunken segments.
• U.S. Patent No. 6335730, same title. It also claims a computerized system using a relativity controller to selectively shrink a segment of objects and a scroll bar which changes in response to relativity controller activity.
• U.S. Patent No. 6393158, titled Method and Storage Device for Expanding and Contracting Continuous Play Media Seamlessly. It discloses a method for playing a stored content which includes providing links to expansion content as the stored content plays.
• U.S. Patent No. 7467218, same title as ‘158 patent. It protects a computer-readable medium storing instructions to display content, provide links to expansion content and determine when such a link has been selected.

The suit filed by MONKEYmedia identified Apple software products as allegedly infringing upon the patents-in-suit. For example, a service application called Summary Service in the Mac OS X operating system potentially infringed upon the ‘938, ‘052 and ‘730 patents by providing a means for the automatic summarization of text documents down to the length of a paragraph or sentence. MONKEYmedia also argued that Apple’s iAd platform on mobile electronic devices encourages infringement of the ‘158 patent by allowing advertisers to present a banner or other cue indicating the presence of expansion content.

Six years of litigation later and on September 6th, 2016, an order of dismissal was filed in W.D. Tex. indicating that both parties had settled their respective claims for relief filed in the case. A joint stipulation of dismissal filed on September 2nd stated that both parties had stipulated to the dismissal of all claims and counter-claims asserted against each other. This comes about a year after MONKEYmedia had settled similar patent infringement claims against Sony Corporation (NYSE:SNE), developer of the Blu-ray digital content standard which takes advantage of seamless expansion technologies covered by MONKEYmedia’s patents. “We’re pleased that the litigation has been resolved with each of Apple and Sony,” said Eric Gould Bear, co-founder of MONKEYmedia and a renowned designer of user interface and interaction technologies. “They each make great products, and I believe synergistic relationships are better business than sitting on opposite sides of the court.”

Sony was originally listed in a related suit also filed by MONKEYmedia in W.D. Tex. charging infringement of some of the same patents-in-suit listed above, including the ‘218, ‘158 and ‘730 patents. Although Sony has settled out of the suit, litigation continues against a group of movie studio defendants who continue to argue their case in district court. These studio defendants include Walt Disney Home Studios Entertainment, Twentieth Century Fox Home Entertainment, Lions Gate Entertainment, Paramount Pictures Corporation, Warner Home Video and Universal Studios. MONKEYmedia’s initial complaint notes that, although studio defendants used to offer only one movie on a disc for home media distribution, defendants now offer bonus content such as special features or film trailers which are supported by the data capabilities of the Blu-ray format.

On September 9th of this year, the studio defendants filed a motion for summary of summary judgement of non-infringement of the ‘158 patent, the final patent remaining in the suit after patent reexaminations at the U.S. Patent and Trademark Office. In the motion for summary judgement, the defendants argue four points supporting their claim of non-infringement. First, they note that bonus content is available for an entire movie, not just segments of that movie. Second, the defendants argue that there are no expansion links in the movie content as defined by the claims of the ‘158 patent. Third, there is no fixed link from an expansion content to a continuing segment, so if a viewer wants to stop a movie to watch bonus content, that viewer has to actively choose to resume the movie. Finally, there are no cues to the bonus content which appear during the course of the movie; viewers must actively open menus and seek the content for themselves. The motion also includes definitions of Blu-ray technology features and descriptions of user interactions with those features by an expert witness, Mark R. Johnson.

On the same day, MONKEYmedia filed a response in opposition to the summary judgement filed by the studio defendants. The response argues that the defendants are seeking a decision on the case “based on little more than the Court’s claim construction ruling, and without any evidence of non-infringement.” MONKEYmedia notes that, while Johnson’s expert witness declaration was attached to the motion, the witness did not put forward an actual opinion regarding non-infringement so much as a collection of observations made while watching a series of discs. The studio defendants’ assertion that the “links” and “segments” in Blu-ray content aren’t covered by claims of the ‘158 patent is based on an attorney argument and not by a qualified expert.

A deposition from MONKEYmedia’s own expert witness, Chris Armbrust, is used by the plaintiff to support its claims of infringement of the ‘158 patent. The witness noted that video is presented as a series of frames creating the perception of motion when played at a high frame rate. Although the frame changes are slight, they constitute individual segments of content. The witness declaration also notes that for some Blu-ray discs, some of the expansion content is available only when a specific segment of video is being shown. The Blu-ray version of 2004’s I, Robot is provided as an example of a Blu-ray offering expansion content only during specific segments of video.

MONKEYmedia’s response also leans on the expert witness testimony provided by the studio defendants. The court filing notes that Johnson admitted in his deposition that many of the elements which the defendants contend are absent are in fact present in the accused discs. MONKEYmedia also argued that the way Johnson described sequences of deleted-scene expansion content available in the Disney animated movie Frozen, the sequences could only be understood as “expansion content” apart from the main movie content.