Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 1 of 24
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`As shown in the Peter Pan Splash Ad example, the pre-existing program content is
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`the Peter Pan Live! video, and the enhancement image is one or more of the three
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`lines of text overlay, and/or the semitransparent gradient under the ad copy, and/or
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`the play button (blue circular icon with white triangle) to the left side of the image.
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`Yahoo’s ad specifications further describe the three lines of text as follows, at
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`https://adspecs.yahoo.com/adformats/native/splashvideo/:
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 2 of 24
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`Additional examples of Yahoo’s interactive video advertising functionality are
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`provided at http://www.slideshare.net/devanm/yahoo-video-advertising-for-
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`branders?qid=9bd07c2b-0ee5-4554-bfe2-eafaf264a210&v=&b=&from_search=5
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`(depicting, at slides 26-32, “clickable video ads,” “click-to-site overlay video ads,”
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`“click-to-video overlay video ads,” and “mobile video ads”):
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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 19-3 Filed 04/11/16 Page 3 of 24
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`b.
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`Yahoo’s ad specifications further demonstrate that the Video Splash Ad detects a
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`receptor site for the enhancement image (the “Action Safe Area”). See
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`https://s.yimg.com/cv/ae/adspecs/templates/f3057_videosplashads_q1161454018944.
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`pdf, at 5:
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 4 of 24
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`Yahoo Splash Ads determine the size of said receptor site (in this example,
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`1440x660px), noting that “Page width determines actual rendered ad dimensions. Ad
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`scales to page width while maintaining aspect ratio. Max size: 200K.” (Source: PSD
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`file available at https://adspecs.yahoo.com/adformats/native/splashvideo/):
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 5 of 24
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`c.
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`Yahoo’s Splash Ad selects said enhancement image (Ad Copy, image, and/or
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`semitransparent gradient) from a plurality of enhancement images (ad copy or images
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`Yahoo receives from actual and potential purchasers of Yahoo advertising, and/or
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`semitransparent gradient images Yahoo chooses to apply below the Ad Copy), based
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`on said size of said receptor site, at least because only ad copy that meets the size
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`requirements set forth for the Splash Ad (i.e., is 35 characters, maximum, including
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`spaces, for Company and Title, and 105 characters, maximum, for Description) is used
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`with Splash Ads. Yahoo’s Splash Ad further meets this limitation to the extent that
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`Yahoo style sheets dictate the size of the enhancement image to be displayed based on
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`the size of the display screen, and further because Yahoo chooses and determines the
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`size and other characteristics of the semitransparent gradient applied with the Ad
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`Copy, as demonstrated by the inclusion of dimensions for the semitransparent gradient
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`enhancement image in the HTML source code for the demo “Video Splash Ads” on
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`Yahoo’s Ad Specs website, e.g., the source code for the “Miss Manga” Video Splash
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`Ad demo at
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`https://adgallery.zenfs.com/eng/splash_demo/141223/b/loreal_beauty.html. Yahoo
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`further accesses enhancement image information to process the ad copy based on the
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`enhancement image information, and renders said processed enhancement image at the
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`receptor site, as visible in the Peter Pan and L’Oreal Splash Ad demo screenshots,
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`supra and below:
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 6 of 24
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`
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`In addition, upon information and belief, Yahoo’s Ad Bar Standard, the BrightRoll Ad
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`Bar, Native Ads using video, and/or other Yahoo Ad Products employ different-sized
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`versions of overlay images, directed by Yahoo’s Ad Specs, and select the
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`enhancement images based on the size of the receptor site. See, e.g.:
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`https://adspecs.yahoo.com/adformats/mobile/yahoonativeads/ (specifications call for
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`“Large” and “Basic” images); www.yahoo.com/movies/batman-v-superman-dawn-of-
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`justice-trailer-184138706.html (displaying Prius overlay ad with image and text):
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 7 of 24
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 8 of 24
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`d. With respect to Claim 41, playing a video or television program on a web browser, and
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`any system with a web browser that plays video ads with overlay such as Yahoo’s
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`Video Splash Ads, is an “interactive television system” programmed to perform the
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`steps of rendering a program scene (the video “creative” described in Splash Ad
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`specifications), accessing receptor site information, including size of said receptor site,
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`for said program scene (described above), selecting an enhancement image (ad copy,
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`image, and/or semitransparent gradient) based upon said size of said receptor site (as
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`described above), and processing based on the receptor site (Action Safe Area)
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`information, and rendering the enhancement image (ad copy, image, and/or
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`semitransparent gradient) based on the enhancement image information. Yahoo’s
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`Connected TV systems also perform these functions when they display Yahoo Video
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`Splash Ads.
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`84.
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`Yahoo has indirectly infringed, and is indirectly infringing, at least Claims 1 and 41 of
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`the ’656 Patent in violation of 35 U.S.C. § 271 et seq., by making, using, offering for sale, selling,
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`and/or importing in or into the United States without authority Yahoo’s interactive video advertising
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`functionality employed by Yahoo’s streaming video delivery services available through yahoo.com and
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`Yahoo’s branded mobile applications at least on Android or iOS devices and Yahoo’s Connected TV
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`platform. For example, Yahoo provides ad specifications detailing the requirements that ad creators
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`must adhere to in order to create compliant advertising for use on Yahoo’s domains. See, e.g.,
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`https://adspecs.yahoo.com. Ad creators thus create ads compliant with Yahoo’s detailed ad
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`specifications and Yahoo then provides its users with, for example, Video Splash Ads developed in
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`accordance with Yahoo’s ad specifications on its video streaming services. See, e.g., Yahoo Video
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`“Splash Ads,” as described in Yahoo’s Ad Specs at
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`https://adspecs.yahoo.com/adformats/native/splashvideo/,
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`https://s.yimg.com/cv/ae/adspecs/templates/f3057_videosplashads_q1161454018944.pdf, and
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`https://adspecs.yahoo.com/adformats/native/splashvideo/. If, to receive the benefit of Yahoo’s
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`interactive video advertising functionality, users may be required to perform one or more actions, to the
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`extent user actions are considered to meet steps of the patented method, Yahoo maintains full control
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`
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`76
`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 9 of 24
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`
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`over the manner and/or timing of the infringing steps. Yahoo induces its customers to infringe one or
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`more claims of the ’656 Patent at least by encouraging them to use interactive video advertising
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`functionality such as Splash Ads, alone or in combination with Yahoo services on the users’ devices, in
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`an infringing manner. For example, Yahoo provides considerable information about its infringing Video
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`Splash Ads, as described above. Ad creators thus create ads compliant with Yahoo’s detailed ad
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`specifications and Yahoo then provides its users with, for example, Video Splash Ads developed in
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`accordance with Yahoo’s ad specifications on its video streaming services. Yahoo has been aware of the
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`’656 Patent since at least December 22, 2015 by way of actual notice of infringement, and also by way
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`of OpenTV’s assertion that Yahoo infringes that patent at the time of filing these Counterclaims. The
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`Yahoo interactive video advertising functionality employed by Yahoo’s streaming video delivery
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`services available through yahoo.com and Yahoo’s branded mobile applications at least on Android or
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`iOS devices and Yahoo’s Connected platform, including Video Splash Ads, are specially made and
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`adapted to infringe the ’656 Patent, are not staple articles of commerce, and have no substantial non-
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`infringing uses. Yahoo contributorily infringes one or more claims of the ’656 Patent by offering for sale
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`or selling its interactive video advertising functionality employed by Yahoo’s streaming video delivery
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`services available through yahoo.com and Yahoo’s branded mobile applications at least on Android or
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`iOS devices and Yahoo’s Connected TV platform, including Video Splash Ads.
`85.
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`Yahoo’s infringement of the ’656 Patent has been and continues to be willful and
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`deliberate. Yahoo has been on notice of its infringement of the ’656 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 interactive
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`video advertising functionality employed by Yahoo’s streaming video delivery services available
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`through yahoo.com and Yahoo’s branded mobile applications at least on Android or iOS devices and
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`Yahoo’s Connected TV platform despite an objectively high likelihood that its actions constituted
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`infringement of the ’656 Patent.
`86.
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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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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 10 of 24
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`
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`COUNT 8: INFRINGEMENT OF THE ’642 PATENT
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`87.
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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.
`88.
`89.
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`OpenTV owns by assignment the entire right, title, and interest in the ’642 Patent.
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`The ’642 Patent was issued by the United States Patent and Trademark Office on July 6,
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`2010, and is entitled “Post Product Visual Alterations.” A true and correct copy of the ’642 Patent is
`
`attached hereto as Exhibit 8.
`90.
`91.
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`The ’642 Patent is valid and enforceable under the laws of the United States.
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`The technologies claimed in the ’642 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 client device-specific characteristics,
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`or client device-specific interactions with the electronic content delivery platforms. For example, the
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`’642 Patent teaches and claims “a method and system in which . . . supplemental information such as
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`advertising, promotional, or informational elements including interactive elements, may be
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`superimposed post-production into a video stream.” ’642 Patent, Abstract. At the time of the invention,
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`the technology of embedding advertising or informational elements in a video stream was not a
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`conventional business practice. A person of ordinary skill in the art reading the ’642 Patent understands
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`that the patent’s disclosure and claims are rooted in complex computer-implemented methods that
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`require complex computer hardware and software technologies to overcome the problem described
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`above. For example, the ’642 Patent explains that then-“[c]urrent methods of embedded advertising are
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`part of the original video production and do not have . . . versatility,” ’642 Patent, 1:35-37, and the
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`further problem that “once embedded advertising is included in a video production, there has been no
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`effective way to remove or alter such advertising.” Id. at 1:42-44.
`92.
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`Yahoo has directly infringed, and is directly infringing, at least Claim 1 of the ’642
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`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 Yahoo interactive video advertising
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`functionality employed by Yahoo’s streaming video delivery services available through yahoo.com and
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`Yahoo’s branded mobile applications at least on Android or iOS devices and Yahoo’s Connected TV
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`
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 11 of 24
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`
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`platform, including, for example, Yahoo Video “Splash Ads,” as described in Yahoo’s Ad Specs at
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`https://adspecs.yahoo.com/adformats/native/splashvideo/,
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`https://s.yimg.com/cv/ae/adspecs/templates/f3057_videosplashads_q1161454018944.pdf, and
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`https://adspecs.yahoo.com/adformats/native/splashvideo/. Furthermore, to receive the benefit of Yahoo’s
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`interactive video advertising functionality employed by Yahoo’s streaming video delivery services,
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`users may be required to perform one or more actions, to the extent user actions are considered to meet
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`steps of the patented method, Yahoo maintains full control over the manner or timing of the infringing
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`steps.
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`93.
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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, meets all the elements of
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`exemplary Claim 1 of the ’642 Patent.
`
`a.
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`Yahoo alleges that it does not infringe Claim 1 because it does not practice the
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`“combining said placement and contour data with a video signal for said video
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`content to create a combined video signal” and “transmitting said combined video
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`signal to a receiver system” elements of Claim 1. Compl. ¶ 59. Yahoo further alleges
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`that “to the extent placement and contour data is determined at all, it is determined by
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`the client software on the end-user’s device, and is not combined and/or transmitted
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`with the video signal.” Id. But contrary to Yahoo’s position, exemplary Claim 1 is
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`infringed by Yahoo’s Video Splash Ads, which cause ad copy (Claim 1’s “label”) to
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`be superimposed on video content in the area of Yahoo’s Video Splash Ads called the
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`“Action Safe Area,” through which Yahoo practices the “combining said placement
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`and contour data with a video signal for said video content to create a combined video
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`signal” element. Yahoo then transmits said combined video signal to a receiver
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`system by causing the Video Splash Ad to be played through a web browser on a user
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`or Yahoo device, as described herein.
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`b.
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`First, Video Splash Ads perform a method of superimposing a label (the ad copy)
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`onto video content (described in Yahoo’s specifications as the “creative”) to
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`supplement said video content, as shown in the Splash Ad specifications and Visual
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 12 of 24
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`Guide,
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`https://s.yimg.com/cv/ae/adspecs/templates/f3057_videosplashads_q1161454018944.
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`pdf at 5:
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`In this example, the Company Name, Title, and Description ad copy are the label
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`containing informational material superimposed onto the video content. An example
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`is also shown at page 4 of the Video Splash Ad Visual Guide, which describes the
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`label as a “text overlay” on the video:
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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 19-3 Filed 04/11/16 Page 13 of 24
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`c.
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`Yahoo detects a suitable location on said video content for placement of the label, and
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`describes this location as the “Action Safe Area” (see supra, outlined in yellow).
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`Yahoo determines placement data (the placement is in the “Action Safe Area”) and
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`contour data (data regarding, for example, the shape and relative contrast or texture
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`onto which the label text will be overlaid) by inserting “a semi-transparent gradient
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`beneath the copy in this area.” Supra, diagram from Visual Guide page 5.
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`d.
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`Yahoo performs or controls and causes others to perform the steps of “combining said
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`placement and contour data with a video signal for said video content to create a
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`combined video signal,” “transmitting said combined video signal to a receiver
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`system,” and “placing said label in said video content using said placement and
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`contour data from said combined video signal” when it causes the video with the
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`overlay text to appear together and in the right locations and with the correct semi-
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`transparent gradient below the ad copy, in a web browser.
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 14 of 24
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`94.
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`Yahoo has indirectly infringed, and is indirectly infringing, at least Claim 1 of the ’642
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`Patent in violation of 35 U.S.C. § 271 et seq., by making, using, offering for sale, selling and importing
`
`in or into the United States without authority the Yahoo 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 at least on Android or iOS devices and Yahoo’s Connected TV platform.
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`Yahoo induces its customers to infringe one or more claims of the ’642 Patent at least by encouraging
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`them to use interactive video advertising functionality such as Splash Ads, alone or in combination with
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`Yahoo services on the users’ devices, in an infringing manner. For example, Yahoo provides ad
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`specifications detailing the requirements that ad creators must adhere to in order to create compliant
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`advertising for use on Yahoo’s domains. See, e.g., https://adspecs.yahoo.com. Ad creators thus create
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`ads compliant with Yahoo’s detailed ad specifications and Yahoo then provides its users with, for
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`example, Video Splash Ads developed in accordance with Yahoo’s ad specifications on its video
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`streaming services. Yahoo has been aware of the ’642 Patent since at least December 22, 2015, by way
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`of actual notice of infringement, and also by way of OpenTV’s assertion that Yahoo infringes that patent
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`at the time of filing these Counterclaims. Yahoo’s interactive video advertising functionality, including
`
`its Video Splash Ads, is specially made and adapted to infringe the ’642 Patent, is not a staple article of
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`commerce, and has no substantial non-infringing uses. Yahoo contributorily infringes one or more
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`claims of the ’642 Patent by offering for sale or selling Yahoo’s interactive video advertising
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`functionality, including its Video Splash Ads, employed by Yahoo’s streaming video services available
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`through yahoo.com and Yahoo’s branded mobile applications at least on Android or iOS devices and
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`Yahoo’s Connected TV platform.
`95.
`
`Yahoo’s infringement of the ’642 Patent has been and continues to be willful and
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`deliberate. Yahoo has been on notice of its infringement of the ’642 Patent since at least December 22,
`
`2015. However, Yahoo continued to make, use, sell, offer to sell, and/or import the Yahoo interactive
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`video functionality employed by Yahoo’s streaming video delivery services despite an objectively high
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`likelihood that its actions constituted infringement of the ’642 Patent.
`96.
`
`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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`
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`82
`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 15 of 24
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`
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`COUNT 9: INFRINGEMENT OF THE ’229 PATENT
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`97.
`
`The allegations of paragraphs 1-16 of these Counterclaims are incorporated by reference
`
`as though fully set forth herein.
`98.
`99.
`
`OpenTV owns by assignment the entire right, title, and interest in the ’229 Patent.
`
`The ’229 Patent was issued by the United States Patent and Trademark Office on March
`
`1, 2011, and is entitled “Convergence of Interactive Television and Wireless Technologies.” A true and
`
`correct copy of the ’229 Patent is attached hereto as Exhibit 9.
`100. The ’229 Patent is valid and enforceable under the laws of the United States.
`101. The technologies claimed in the ’229 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 ’229 Patent teaches
`
`“the convergence of interactive television and wireless technologies in networks based on interactive
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`television.” ’229 Patent, Field of Invention. The invention of the ’229 Patent is aimed at solving the
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`problem of allowing users’ various activities or devices to influence programming on other devices,
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`across activities, or across platforms, through updates to a user profile. A person of ordinary skill in the
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`art reading the ’229 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. The technology claimed in the ’229 Patent was
`
`not a conventional business practice, in particular, in view of the nascent stage of the interactive
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`television technology at the time of invention.
`102. Yahoo has directly infringed, and is directly infringing, at least Claims 1, 12 and 26 of
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`the ’229 Patent, in violation of 35 U.S.C. § 271 et seq., by making, using, offering for sale, selling,
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`and/or importing in or into the United States without authority the targeted advertising functionality in,
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`for instance, Yahoo’s streaming video delivery services available through yahoo.com and Yahoo’s
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`branded mobile applications available at least on 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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`83
`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 16 of 24
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`
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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.
`103. Upon information and belief, one or more of Yahoo’s targeted advertising functionalities,
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`alone or in combination with Yahoo mobile applications, meets all the elements of exemplary Claim 1
`
`of the ’229 Patent.
`a.
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`Yahoo practices a method for utilizing a user profile in an interactive television
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`system. See, e.g., https://www.yahoo.com/tv (Yahoo TV is an interactive television
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`system, as shown in the below screenshot, that serves targeted advertisements in an
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`infringing manner. Yahoo gives users the option of signing in to their user profiles to
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`access Yahoo TV).
`
`b.
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`Yahoo updates a user profile responsive to a first user activity initiated via a first
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`device. See, e.g.,
`
`https://policies.yahoo.com/us/en/yahoo/privacy/topics/location/index.htm (Yahoo
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`collects information based on use of a GPS enabled mobile device (first device), such
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`as for conducting Internet searches and/or reviewing content, such as news or sports
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`stories on Yahoo’s domain (first user activity), and stores users’ physical location
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`information on their profiles, as shown in the screenshot below).
`
`
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`84
`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 19-3 Filed 04/11/16 Page 17 of 24
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`c.
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`Yahoo initiates a second user activity via a second device different from the first
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`device, wherein only one of the first or second user activities relates to television
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`viewing. For example, upon a user’s request through a browser on a personal
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`computer (second user device) for Yahoo TV, Yahoo initiates its video streaming
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`service (second user activity) and serves the content to the user by means of (via) the
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`personal computer. The video streaming service, Yahoo TV, “relates” to television
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`viewing, while Internet searching or otherwise perusing text content on a GPS
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`enabled mobile device does not.
`
`d.
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`Yahoo accesses the user profile in response to the video streaming service. See, e.g.,
`
`https://info.yahoo.com/privacy/us/yahoo/relevantads.html (the advertisements a user
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`sees during Yahoo’s video streaming service are influenced, as shown in the
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`screenshot below, by the user profile, including, “information [the user] provide[s],
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`historical searches [the user] conducts…and location information”).
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`85
`DEFENDANTS’ ANSWER AND COUNTERCLAIMS; Civil Case No.: 5:16-cv-00349
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`Case 5:16-cv-00349-NC Document 19-3 Filed 04/11/16 Page 18 of 24
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`e.
`
`The above screenshot also demonstrates that Yahoo transmits advertisements (data) to
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`a user in response to the video streaming service (second user activity), wherein the
`
`advertisements are based at least in part on the user’s profile, and wherein the Internet
`
`searches or textual content viewing on a GPS enabled mobile device (first user
`
`activity on first device) influences the advertisement (data) transmitted to the user in
`
`response to the video streaming service (second user activity).
`104. Yahoo has indirectly infringed, and is indirectly infringing, at least Claim 1 of the ’229
`
`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 targeted advertising functionality
`
`employed by Yahoo’s streaming video delivery services available through yahoo.com and Yahoo’s
`
`branded mobile applications at least on Android or iOS devices and Yahoo’s Connected TV platform. If,
`
`to receive the benefit of Yahoo’s targeted advertising functionality, users may be required to perform
`
`one or more actions, to the extent user actions are considered to meet steps of the patented method,
`
`Yahoo maintains full control over the manner and/or timing of the infringing steps. Yahoo induces its
`
`customers to infringe one or more claims of the ’229 Patent at least by encouraging them to use various
`
`Yahoo products that collect user data for targeted advertising, including, for example, creating Yahoo
`
`user accounts, using Yahoo mobile phone apps that track physical location, and conducting Internet
`
`
`
`86
`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 19-3 Filed 04/11/16 Page 19 of 24
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`searches or review non-video Yahoo content on www.yahoo.com (and sub-domains), in an infringing
`
`manner. For example, Yahoo provides its customers with considerable information about its targeted
`
`advertising methods, including how its customers can opt-out of interest-based targeted advertising
`
`across Yahoo’s sites and services. See, e.g., https://aim.yahoo.com/aim/us/en/optout/. Yahoo has been
`
`aware of the ’229 Patent since at least 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 filing these
`
`Counterclaims. The Yahoo targeted advertising functionality employed by Yahoo’s streaming video
`
`delivery services available through yahoo.com and Yahoo’s branded mobile applications at least on
`
`Android or iOS devices and Yahoo’s Connected TV platform, are specially made and adapted to
`
`infringe the ’229 Patent, are not staple articles of commerce, and have no substantial non-infringing
`
`uses. Yahoo contributorily infringes one or more claims of the ’229 Patent by offering for sale or selling
`
`the targeted advertising functionality in Yahoo’s streaming video delivery services available through
`
`yahoo.com and Yahoo’s branded mobile applications at least on Android or iOS devices and Yahoo’s
`
`Connected TV platform.
`105. Yahoo’s infringement of the ’229 Patent has been and continues to be willful and
`
`deliberate. Yahoo has been on notice of its infringement of the ’229 Patent since at least December 22,
`
`2015. However, Yahoo continued to make, use, sell, offer to sell, and/or import the targeted
`
`advertisements functionality in, for instance, Yahoo’s streaming video delivery services despite an
`
`objectively high likelihood that its actions constituted infringement of the ’229 Patent.
`106. As a result of Yahoo’s infringement, OpenTV has suffered and will continue to suffer
`
`damages in an amount to be proved at trial.
`
`COUNT 10: INFRINGEMENT OF THE ’081 PATENT
`107. The allegations of paragraphs 1-16 of these Counterclaims are incorporated by reference
`
`as though fully set forth herein.
`108. OpenTV owns by assignment the entire right, title, and interest in the ’081 Patent.
`109. The ’081 Patent was issued by the United States Patent and Trademark Office on
`
`November 14, 2000, and is entitled “Security Model for Interactive Television Applications.” A true and
`
`correct copy of the ’081 Patent is attached hereto as Exhibit 10.
`
`
`
`87
`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 19-3 Filed 04/11/16 Page 20 of 24
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`
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`110. Claims 1-3, 23, and 24 of the ’081 Patent were held invalid under 35 U.S.C. § 101 in
`
`OpenTV, Inc., et al., v. Apple, Inc., N.D. Cal. Case No. 3:15-cv-02008. OpenTV is currently in the
`
`process of appealing the district court’s decision to the Federal Circuit as it believes that the ’081 Patent
`
`is valid and enforceable under the laws of the United States. In the interest of efficiency this Court
`
`should stay adjudication of the infringement and validity disputes between OpenTV and Yahoo with
`
`respect to the claims of the ’081 Patent pending resolution of the appeal to be filed in the Apple case.
`111. The technologies