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`(showing a banner associated with a video wherein the banner links to the advertiser’s
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`website); http://www.brightroll.com/sites/default/files/BrightRoll-Ad-Specs-Preroll-
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`and-Companion-v7.7.pdf (showing a companion banner associated with a video
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`wherein the banner links to the advertiser’s website):
`
`c.
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`Yahoo’s interactive video ads “automatically and directly electronically access[] said
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`online information associated with said link in response to a user initiated command.”
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`’736 Patent at 10:49-51. Yahoo accomplishes this step when a user clicks on the
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`displayed video ad with his or her cursor—rendered as a hand—or clicks on the
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`companion banner ad, ad bar, or other visual indicator and he or she is taken to the
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`advertiser’s website. This access is “direct” and “automatic” because all the user
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`needs to do is click on the ad, and the system accomplishes the rest, taking the user to
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`the website, on which the user has direct access to the online information. The
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`information is “associated” with the link because clicking on the interactive video ad
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`directs the user to the webpage found at that link. Links are provided with the video
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`programming and are decoded when received so as to provide a visual indication to
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`the user that additional information may be available, such that when the user
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`interacts with the link, he or she is presented with the website of the advertiser. For
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`example, clicking on an interactive video ad for Citi will take a user to Citi’s webpage
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`via the link in that ad. See, e.g., www.yahoo.com/tv (showing an interactive video ad
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`for Citi on yahoo.com); https://www.citi.com/credit-
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`cards/creditcards/citi.action?ID=DoubleCash&cmp=BAC~01~140701~BRANDING
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`~YAHOOLN~YAHOO~CAS&m=82ZC111111W (showing the Citi webpage to
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`which a user is taken if the user clicks on the Citi ad):
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`24.
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`Yahoo has indirectly infringed, and is indirectly infringing, at least Claim 8 of the ’736
`
`Patent in violation of 35 U.S.C. § 271 et seq., by making, using, offering for sale, selling, and/or
`
`importing in or into the United States without authority its interactive video ads. Yahoo induces its users
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`to infringe one or more claims of the ’736 Patent at least by encouraging them to use its video streaming
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`services, which display interactive video ads, alone or in combination with Yahoo devices or the users’
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`devices, in an infringing manner. For example, Yahoo provides ad specifications detailing the
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`requirements that ad creators must adhere to in order to create compliant advertising for use on Yahoo’s
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`domains. See, e.g., https://adspecs.yahoo.com. Ad creators thus create ads compliant with Yahoo’s
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`detailed ad specifications and Yahoo then provides its users with, for example, interactive video
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`advertisements with embedded web addresses developed in accordance with Yahoo’s ad specifications
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`on its video streaming site at www.yahoo.com/tv. Yahoo has been aware of the ’736 Patent since at least
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`December 22, 2015, by way of actual notice of infringement, and also by way of OpenTV’s assertion
`
`that Yahoo infringes that patent at the time of the filing of this Counterclaim. Yahoo’s interactive video
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`ads are specially made and adapted to infringe the ’736 Patent, are not staple articles of commerce, and
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`have no substantial non-infringing uses. Yahoo contributorily infringes one or more claims of the ’736
`
`Patent by offering for sale or selling its interactive video ads.
`25.
`
`Yahoo’s infringement of the ’736 Patent has been willful and deliberate. Yahoo has been
`
`on notice of its infringement of the ’736 Patent since at least December 22, 2015. However, Yahoo
`
`continued to make, use, offer to sell, sell, and/or import its interactive video ads despite an objectively
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`high likelihood that its actions constituted infringement of the ’736 Patent.
`26.
`
`As a result of Yahoo’s acts of infringement, OpenTV has suffered damages in an amount
`
`to be proved at trial.
`
`COUNT 2: INFRINGEMENT OF THE ’754 PATENT
`
`27.
`
`The allegations of paragraphs 1-16 of these Counterclaims are incorporated by reference
`
`as though fully set forth herein.
`28.
`
`OpenTV owns by assignment the entire right, title, and interest in the ’754 Patent.
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`29.
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`The ’754 Patent was issued by the United States Patent and Trademark Office on July 6,
`
`2004, and is entitled “System and Method for Interactive Gameplay Scheduled Based on Real-Life
`
`Events.” A true and correct copy of the ’754 Patent is attached hereto as Exhibit 2.
`30.
`31.
`
`The ’754 Patent is valid and enforceable under the laws of the United States.
`
`The technologies claimed in the ’754 Patent were aimed at solving problems specific to
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`interactive electronic content delivery systems, such as the Internet, in particular, the problem of
`
`providing ready connectivity and logic for personalization and customization, among geographically-
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`dispersed people seeking to participate in contests based on a large amount of real-time data. For
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`example, the ’754 Patent teaches and claims “[a] method and system for providing on-line game
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`competition,” ’754 Patent, Abstract, and in an embodiment of the invention, the ’754 Patent uses a web
`
`browser and cookies in a “login and registration process,” id. at 16:44-67, through which a “player
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`profile indicating a real-life participant preference” is created. Id. The methods and systems claimed in
`
`the ’754 Patent require complex computer hardware and software technologies to overcome the
`
`problems described above, and do so by enabling multiple players, in different locations yet sharing
`
`common interests, to compete in contests incorporating large amounts of data, e.g., about real-life
`
`events, and/or pre-existing player preferences. The technology claimed in the ’754 Patent was not a
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`conventional business practice at the time of the invention. As the ’754 Patent explains, “[m]any current
`
`electronic video games are limited to two players competing against each other. This limits who can
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`participate.” Id. at 1:25-27. “Additionally, many conventional games are limited by geography” and
`
`“may also have a drawback of not establishing competition among a community of players with
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`common interests.” Id. at 1:28-36.
`32.
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`Yahoo has directly infringed, and is directly infringing, at least Claim 1 of the ’754
`
`Patent, in violation of 35 U.S.C. § 271 et seq., by making, using, offering for sale, selling, and/or
`
`importing in or into the United States without authority the fantasy gaming functionality employed by
`
`Yahoo’s fantasy sports gaming services available through yahoo.com and Yahoo branded mobile
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`applications available at least on Android or iOS devices and Yahoo’s Connected TV platform.
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`Furthermore, to receive the benefit of the fantasy gaming functionality employed by Yahoo’s fantasy
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`sports gaming services, users may be required to perform one or more actions, to the extent user actions
`
`
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`
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`are considered to meet steps of the patented method, Yahoo maintains full control over the manner
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`and/or timing of the infringing steps.
`33.
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`Upon information and belief, one or more of Yahoo’s fantasy game functionalities, alone
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`or in combination with Yahoo mobile applications, meet all the elements of exemplary Claims 1-2.
`a.
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`Contrary to Yahoo’s position, exemplary Claims 1-2 do not require grouping players
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`onto teams based on “loyalty.” See Compl. ¶ 65. Moreover, Claims 1-2 can be and are
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`practiced by Yahoo’s fantasy game functionalities even if in the Yahoo fantasy games
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`“each player constructs her unique team by designating a plurality of real-life
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`athletes.” Id. Yahoo asserts that Yahoo fantasy games do not practice the “identifying
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`a plurality of players, each player associated with one of a plurality of teams based on
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`a player profile indicating a real-life participant preference, each team relating to a
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`real-life participant in a scheduled event” or “displaying an assignment of a plurality
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`of players to a team for the one or more contests based on a player profile indicating a
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`real-life participant preference” limitations. Id. But each player of Yahoo fantasy
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`sports games, for example Yahoo Sports Fantasy Baseball, is associated with one of a
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`plurality of teams based on a player profile, as displayed, for example, by the Yahoo
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`Fantasy Baseball “Mock Draft”:
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`
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`
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`http://baseball.fantasysports.yahoo.com/b1/mock_waiting?mlid=2373373&lobby=sta
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`nd (available after log-in with valid Yahoo ID). The “plurality of players” are
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`displayed in this example as “You,” “BigDaddy,” “Al,” “Daniel,” “Ryan,” etc. Each
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`

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`Case 5:16-cv-00349-NC Document 19-1 Filed 04/11/16 Page 6 of 15
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`player is “associated with one of a plurality of teams” at least because each player is
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`associated with a draft “team,” in this example the “Around the Horn 2373373” team,
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`“based on a player profile indicating a real-life participant preference” because to join
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`a fantasy baseball draft team, the Yahoo fantasy sports user must articulate certain
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`“real-life participant preferences” during a registration process. See, e.g., Team
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`League Registration Overview, https://help.yahoo.com/kb/fantasy-baseball/team-
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`league-registration-overview-sln22653.html:
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`See also Profile Settings Management Guide, https://help.yahoo.com/kb/profile-
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`settings-management-guide-sln22671.html, which states that the fantasy sports user
`
`can customize settings “like your background color, custom logo, or team name” and
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`describes the “Fantasy Profile” of the user:
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`In addition, Yahoo fantasy sports players are “associated with one of a plurality of
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`teams based on a player profile indicating a real-life participant preference, each team
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`relating to a real-life participant in a scheduled event” and/or “assign[ed] to a team for
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`the one or more contests based on a player profile indicating a real-life participant
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`preference” because Yahoo associates players indicating a preference for a particular
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`set of teams with other players, based on the players’ profiles indicating their
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`preferences for real-life participants in particular sports leagues, e.g., preference to
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`join Yahoo fantasy baseball rather than Yahoo fantasy football.
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`In addition, Yahoo fantasy sports players are “associated with one of a plurality of
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`teams based on a player profile indicating a real-life participant preference, each team
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`relating to a real-life participant in a scheduled event” and/or “assign[ed] to a team for
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`the one or more contests based on a player profile indicating a real-life participant
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`preference” because Yahoo associates players indicating a preference for a particular
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`set of teams with other players, based on the players’ profiles indicating their
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`preferences associated with the leagues they create, as in the following screenshot
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`Case 5:16-cv-00349-NC Document 19-1 Filed 04/11/16 Page 8 of 15
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`from “Custom Leagues,” available after logging in with a Yahoo ID at
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`http://baseball.fantasysports.yahoo.com/b1/reg/joinleague/private (see, e.g., sixth
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`team listed, which is named “Orlando SunRays”:
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`Reloading that same Custom Leagues list,
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`http://baseball.fantasysports.yahoo.com/b1/reg/joinleague/private at different times
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`yields further examples of player preferences for real-life participants, e.g., as
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`displayed in the third team listed below, “Jays 2016”:
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`b.
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`Though the Complaint does not allege otherwise, Defendants state that Yahoo’s
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`fantasy gaming functionality practices the other limitations of exemplary Claims 1
`
`and 2 as well.
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`c.
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`First, Yahoo fantasy sports games such as Yahoo Sports Fantasy Baseball, are
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`methods for computer-implemented gameplay comprising a plurality of players, each
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`player having a player profile indicating a real-life participant preference. Preferences
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`include, for example, setting a League Name, League type, invite permissions, type of
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`draft, draft date, and draft time. See, e.g.,
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`https://baseball.fantasysports.yahoo.com/b1/reg/createleague:
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`d.
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`Yahoo Fantasy Sports draft teams are “relat[ed] to a real-life participant in a
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`scheduled event” because the draft match-up contests are based on real-life sports
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`teams and/or real-life athletes (“participants”) in real-life sports games (“scheduled
`
`events”). For example, Yahoo Sports Fantasy Baseball’s season mirrors the 2016
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`MLB regular season schedule, starting April 3, 2016 and wrapping up on October 2,
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`2016. See https://help.yahoo.com/kb/fantasy-baseball/play-yahoo-sports-fantasy-
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`baseball-sln6802.html (“The Yahoo Sports Fantasy Baseball season mirrors the 2016
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`MLB regular season schedule, starting April 3, 2016 and wrapping up on October 2,
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`2016.”). See also Yahoo Sports Fantasy Baseball Mock Draft screenshot displaying
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`“Around the Horn” Fantasy Baseball Draft “team” relating to real-life participants
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`(real-life baseball teams and/or real-life baseball players such as Mike Trout, Los
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`Angeles Angels) in a scheduled event (real-life baseball games):
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`e.
`
`Yahoo fantasy sports contests, such as Yahoo Sports Fantasy Baseball, match two or
`
`more teams for one or more contests at least by matching one fantasy player’s team
`
`against another. In the above example, the fantasy player’s team has not yet been
`
`picked (“My Team” in the right-hand column). When “My Team” is populated, the
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`“contest” is performed and the winner of the “contest” is determined through a
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`scoring system based on statistics corresponding to the results of real-life scheduled
`
`events involving real-life participants (real-life baseball games involving real-life
`
`professional baseball players). For example, Yahoo Sports has a “Daily Fantasy
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`Contest” and other matchups (contests) pitting the real-life users’ teams against each
`
`other. In addition to the drafts and mock drafts discussed above, see, e.g., daily NBA
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`contest advertised at http://baseball.fantasysports.yahoo.com/b1/draft:
`
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`Case 5:16-cv-00349-NC Document 19-1 Filed 04/11/16 Page 12 of 15
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`f.
`
`The real-life events (baseball games) are different from the fantasy contests. See, e.g.,
`
`https://help.yahoo.com/kb/fantasy-baseball/play-yahoo-sports-fantasy-baseball-
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`sln6802.html:
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`Yahoo Sports Fantasy Baseball performs the step of awarding a score to each of the
`
`plurality of fantasy sports players based on the results of the contests or matchups.
`
`See, e.g., https://help.yahoo.com/kb/fantasy-basketball/winning-percentage-
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`calculation-sln6525.html:
`
`See also, e.g., https://help.yahoo.com/kb/fantasy-basketball/playoff-tiebreaker-rules-
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`fantasy-sports-sln6539.html:
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`34.
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`Yahoo has indirectly infringed, and is indirectly infringing, at least Claims 1 and 2 of the
`
`’754 Patent in violation of 35 U.S.C. § 271 et seq., by making, using, offering for sale, selling, and/or
`
`importing in or into the United States without authority Yahoo’s fantasy sports games. Yahoo induces its
`
`customers to infringe one or more claims of the ’754 Patent at least by encouraging them to use Yahoo
`
`fantasy sports games, alone or in combination with Yahoo services on the users’ devices, in an
`
`infringing manner. For example, Yahoo provides its customers with considerable information about its
`
`infringing Yahoo Sports Fantasy Baseball and other fantasy sports games (basketball, football, etc.), at
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`the websites cited in the preceding paragraphs of these Counterclaims. See, e.g.,
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`https://help.yahoo.com/kb/fantasy-baseball/team-league-registration-overview-sln22653.html. Yahoo
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`has been aware of the ’754 Patent since at least December 22, 2015 by way of actual notice of
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`infringement, and also by way of OpenTV’s assertion that Yahoo infringes that patent at the time of
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`filing these Counterclaims. The Yahoo fantasy sports games are specially made and adapted to infringe
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`the ’754 Patent, are not staple articles of commerce, and have no substantial non-infringing uses. Yahoo
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`contributorily infringes one or more claims of the ’754 Patent by offering for sale or selling its fantasy
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`sports games.
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19-1 Filed 04/11/16 Page 14 of 15
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`35.
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`Yahoo’s infringement of the ’754 Patent has been and continues to be willful and
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`deliberate. Yahoo has been on notice of its infringement of the ’754 Patent since at least December 22,
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`2015. However, Yahoo continued to make, use, sell, offer to sell, and/or import the Yahoo fantasy sports
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`games despite an objectively high likelihood that its actions constituted infringement of the ’754 Patent.
`36.
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`As a result of Yahoo’s infringement, OpenTV has suffered and will continue to suffer
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`damages in an amount to be proved at trial.
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`COUNT 3: INFRINGEMENT OF THE ’327 PATENT
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`37.
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`The allegations of paragraphs 1-16 of these Counterclaims are incorporated by reference
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`as though fully set forth herein.
`38.
`39.
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`OpenTV owns by assignment the entire right, title, and interest in the ’327 Patent.
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`The ’327 Patent was issued by the United States Patent and Trademark Office on April
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`11, 2006, and is entitled “Using the Electronic Program Guide to Synchronize Interactivity with
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`Broadcast Programs.” A true and correct copy of the ’327 Patent is attached hereto as Exhibit 3.
`40.
`41.
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`The ’327 Patent is valid and enforceable under the laws of the United States.
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`The technologies claimed in the ’327 Patent were aimed at solving problems specific to
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`interactive electronic content delivery systems, such as the Internet, and in particular, the problem of
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`coupling content distribution with interactivity, i.e., responsive to user-specific characteristics, or user-
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`specific interactions with the electronic content delivery platforms. For example, the ’327 Patent teaches
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`and claims a method to overcome the problem of interactive applications being “lost, destroyed, or
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`knocked out of synch with the television program between insertion of the application into the video
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`stream . . . and reception.” ’327 Patent at 2:65-3:3. As the patent explains, this occurs for multiple
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`reasons (see id. at 3:9-50) including significant differences in “the resource and bandwidth capabilities
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`of the subnetworks that receive the network broadcast.” Id. at 3:36-38. A person of ordinary skill in the
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`art reading the ’327 Patent understands that the patent’s disclosure and claims are rooted in complex
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`computer-implemented methods that require complex computer hardware and software technologies that
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`can be used to overcome the problem described above. At the time of the invention, coordinating
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`program identifiers from electronic program guides with timing offset objects specific to the broadcast
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19-1 Filed 04/11/16 Page 15 of 15
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`
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`programs to later use to reference interactive content from a database was not a conventional business
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`practice. See, generally, id. at 4:33-64.
`42.
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`Yahoo has directly infringed and is directly infringing at least Claims 13 and 36 of the
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`’327 Patent in violation of 35 U.S.C. § 271 et seq., by making, using, offering for sale, selling and/or
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`importing in or into the United States without authority the interactive video advertising functionality
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`employed by Yahoo’s streaming video delivery services available through yahoo.com and Yahoo’s
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`branded mobile applications available on at least Android or iOS devices and Yahoo’s Connected TV
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`platform. Furthermore, to receive the benefit of Yahoo’s streaming video delivery services, users may be
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`required to perform one or more actions, to the extent user actions are considered to meet steps of the
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`patented method, Yahoo maintains full control over the manner or timing of the infringing steps.
`43.
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`Upon information and belief, one or more of Yahoo’s interactive video advertising
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`functionalities, alone or in combination with Yahoo mobile applications, meet all the elements of
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`exemplary Claim 13.
`a.
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`Contrary to Yahoo’s position, the interactive applications on, for example, Yahoo TV
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`are “associated with” broadcast programs which, as the specification explains,
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`includes “television shows, commercials, public service announcements, pay-per-
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`view events, and the like.” ’327 Patent at 7:25-30; see, e.g.,
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`https://www.yahoo.com/tv/tagged/originals (the interactive video advertising
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`functionality in Yahoo TV is associated with television shows like Community).
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`Further, Yahoo's suggestion that an Internet broadcast platform is beyond the scope of
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`the ’327 Patent, is incorrect. To the contrary, the ’327 Patent defines “broadcasting”
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`simply as “transmitting a program to one or more viewers.” ’327 Patent at 7:14-27.
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`The specification further cites “internet multicast signal” as an example of a broadcast
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`signal. Id. Moreover, Yahoo allows users to choose broadcast programs from
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`electronic program guides (EPG), and based on the user’s choice of program, an
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`associated interactive application is launched. See, e.g., https://www.yahoo.com/tv/
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`(Yahoo TV uses an electronic program guide to allow users to choose a broadcast
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`program). Contrary to Yahoo's position, the ’327 Patent does not require that the EPG
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`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349