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`EXHIBIT 5
`EXHIBIT 5
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`Case 1:16-cv-04586-LTS-HBP Document 55-5 Filed 07/19/18 Page 2 of 27
`Case 1:16—cv—04586—LTS-HBP Document 55-5 Filed 07/19/18 Page 2 of 27
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`UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF ILLINOIS
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`EASTERN DIVISION
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`T-REX PROPERTY AB,
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`Plaintiff,
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`V
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`Case No.: 1:16-cv-04826
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`CONTEXTMEDIA INC., and
`CONTEXTMEDIA HEALTH, LLC,
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`JURY TRIAL DE
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`DED
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`Defendants.
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`PLAINTIFF’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff T-Rex Property AB,
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`for
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`its Amended Complaint against Defendants
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`ContextMedia, Inc., and ContextMedia Health, LLC, states as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for patent infringement arising under the patent laws of the
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`United States, 35 U.S.C. § 1 et seq., including 35 U.S.C. §§ 271, 281, 283, 284 and 285.
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`PARTIES
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`2.
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`Plaintiff T-Rex Property AB is a company organized and existing under the laws
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`of Sweden with its principal place of business at Varvagen 6, 18274 Stocksund, Sweden.
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`3.
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`On information and belief, Defendant ContextMedia,
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`Inc.,
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`is an Illinois
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`corporation with an office located at 330 N. Wabash Ave., Suite 2500, Chicago, Illinois.
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`4.
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`On information and belief, Defendant ContextMedia Health, LLC, is a Delaware
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`limited liability corporation with a principal office located at 330 N. Wabash Ave., Suite 2500,
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`Chicago, Illinois. On information and belief, Defendant’s registered agent is Corporation
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`Service Company, 2711 Centerville Rd, Suite 400, Wilmington, Delaware 19808.
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`Case 1:16—cv—04586—LTS-HBP Document 55-5 Filed 07/19/18 Page 3 of 27
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`JURISDICTION AND VENUE
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`5.
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`This Court has subject matter jurisdiction over this patent infringement action
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`under 28 U.S.C. §§ 1331 and 1338(a).
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`6.
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`This Court has personal jurisdiction over Defendant ContextMedia, Inc., because,
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`on information and belief, Defendant has systematic and continuous contacts with Illinois and
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`this judicial district because Defendant has an office located in this judicial district, it regularly
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`transacts business in the State of Illinois and this judicial district and it has thereby purposefully
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`availed itself of the benefits and protections of the laws of the State of Illinois. Furthermore, this
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`Court has personal jurisdiction over Defendant because, as described filrther below, Defendant
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`has committed acts of patent infringement giving rise to this action within the State of Illinois
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`and has thus established minimum contacts such that the exercise of personal jurisdiction over
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`Defendant does not offend traditional notions of fair play and substantial justice.
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`7.
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`This Court has personal jurisdiction over Defendant ContextMedia Health, LLC,
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`because, on information and belief, Defendant has systematic and continuous contacts with
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`Illinois and this judicial district because Defendant has an office located in this judicial district, it
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`regularly transacts business in the State of Illinois and this judicial district and it has thereby
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`purposefully availed itself of the benefits and protections of the laws of the State of Illinois.
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`Furthermore, this Court has personal jurisdiction over Defendant because, as described further
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`below, Defendant has committed acts of patent infringement giving rise to this action within the
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`State of Illinois and has thus established minimum contacts such that the exercise of personal
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`jurisdiction over Defendant does not offend traditional notions of fair play and substantial
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`justice.
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`8.
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`Venue is proper in this Judicial District under 28 U.S.C. §§ 1391 and 1400(b).
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`THE PATENTS-IN-SUIT
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`9.
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`The allegations set forth in the foregoing paragraphs 1 through 8 are hereby re-
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`alleged and incorporated herein by reference.
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`Case 1:16-cv—04586-LTS-HBP Document 55-5 Filed 07/19/18 Page 4 of 27
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`The ‘470 Patent
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`10.
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`On January 16, 2007, U.S. Patent Number RE39,470 (the “’470 Patent”), entitled
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`“Digital Information System,” was duly and legally issued by the United States Patent and
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`Trademark Office. A true and correct copy of the ’470 Patent is attached as Exhibit A to this
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`Amended Complaint.
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`11.
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`The ’470 Patent is a reissue of U.S. Patent Number 6,005,534, which was filed on
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`July 2, 1996 and which claims priority under 35 U.S.C. § 119(e) to U.S. Provisional Patent
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`Application Number 60/017,403, which was filed on May 14, 1996. The ’534 Patent also claims
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`priority under 35 U.S.C. § ll9(a)-(d) to foreign patent application number 9601603-5, which
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`was filed on April 26, 1996 in Sweden. As “[p]riority under section 119, 365(a), 365(b), 386(a),
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`or 386(b) shall not be taken into account in determining the term of a patent,” (35 U.S.C. §
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`154(a)(3)), the ’470 Patent expires 20 years from July 2, 1996.
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`12.
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`The innovations disclosed in the ’470 Patent “relate[] to a method and apparatus
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`for controlling and coordinating” electronic displays “in a digital
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`information system for
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`displaying information on at least one display device .
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`.
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`. said information being displayed in
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`places that are accessible to and frequented by a general public.” (’470 Patent at 1:15-21.) “An
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`object of the present invention is to provide a flexible system in which external information
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`mediators are able to dynamically control in real time the transmission of display instructions to
`3! “
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`a larger public in different places
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`and to enable similar or specific information to be displayed
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`in places that are mutually far apart.” (Id. at 2:39-42; 2:52-54.)
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`13.
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`A system operating according to an embodiment of the ’470 Patent can include a
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`control center with a communication interface that connects devices to create and update a
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`display list in real time using control instruction fields sent from external mediators and to
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`transmit and display the desired images to one or more electronic displays that can be controlled
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`independently of other electronic displays. (Id. at 3:4—19; 4:42-45.) In embodiments, the control
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`center can include one or more servers, workstations, and databases stored on one or more
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`
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`physical storage devices, and can include redundancy, of both computer hardware and the
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`information stored, where the devices can be connected using a network, such as a LAN (Local
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`Area Network) or by using a cable-carried ISDN solution (Integrated Services Digital Network)
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`or other fixed lines that have a similar capacity. (Id. at 4:57-5:16; 5:59-67; 6:41-59; 12:55-13z7.)
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`In one embodiment of the devices or projectors, the projector is a large picture screen in LCD or
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`LED technology or the like that includes or is connected to a computer. (Id. at 6:26-32.)
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`14.
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`In one embodiment of the invention, personnel operating a work station can enter
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`information to be displayed from an external mediator Via projector control instructions in the
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`exposure list created by the server. (Id. at 8: 10-26.) Operators are able to interrupt a queue in the
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`server in order to update the exposure list with information generated centrally from the control
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`center or with information from an external information mediator. (Id)
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`15.
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`Information mediators can use an exposure program to deliver complete images
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`(e.g. an image, a series of images or a video clip) for display which would not require processing
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`by the control center.
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`(Id. at 11:19-28.) These can be dynamically added to the exposure list by
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`the exposure handler. (Id.) External information mediators can thus deliver a complete image for
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`display (an image, a series of images or a Video clip) which can be processed automatically and
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`inserted into the exposure list, or an administrator can select information from an external
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`mediator and process the information so that it can be inserted into the exposure list via the
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`exposure handler. (Id. at 8:27-41.)
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`The ‘334 Patent
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`16.
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`On June 3, 2008, US. Patent Number 7,382,334, entitled “Digital Information
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`System,” was duly and legally issued by the United States Patent and Trademark Office. A true
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`and correct copy of the ’334 Patent is attached as Exhibit B to this Amended Complaint.
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`17.
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`The innovations described by the ’334 Patent relate to methods and arrangements
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`“for controlling and coordinating” digital display devices “in a digital information system for
`’3 6‘
`displaying information on at least one display device wherein the information is displayed in
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`places that are accessible to and frequented by a general public.” (’334 Patent at Abstract; 1:13-
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`24; 5:20-32.) The present invention is able “to provide a flexible system in which external
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`information mediators are able to dynamically control in real time the transmission of display
`’3 £6
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`instructions to a larger public in different places
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`and to enable similar or specific information
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`to be displayed in places that are mutually far apart.” (Id. at 2:56-60; 3:5-11.)
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`18.
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`A system operating according to an embodiment of the ’334 Patent can include a
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`control center with a communication interface that connects devices to create and update a
`
`display list in real time using control instruction fields sent from external mediators and to
`
`transmit and display the desired images to one or more electronic displays that can be controlled
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`independently of other electronic displays. (Id. at 3:38-60; 5:29-30.) In embodiments, the control
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`center can include one or more servers, workstations, and databases stored on one or more
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`physical storage devices, and can include redundancy, of both computer hardware and the
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`information stored, where the devices can be connected using a network, such as a LAN (Local
`
`Area Network) or by using a cable-carried ISDN solution (Integrated Services Digital Network)
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`or other fixed lines that have a similar capacity. (Id. at 6:17-45; 7:17-29; 11:60-67.) In some
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`embodiments, a relational database can be used to store image and video data and each electronic
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`display can be assigned a unique TCP/IP (Transmission Control Protocol / Internet Protocol)
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`address such that each display can be individually addressed and sent content for display. (Id. at
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`14:50-15:8.)
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`19.
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`In one embodiment of the invention, personnel operating a work station can enter
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`information to be displayed from an external mediator via projector control instructions in the
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`exposure list created by the server. (Id. at 9:45-61.) Operators are able to interrupt a queue in the
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`server in order to update the exposure list with information generated centrally from the control
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`center or with information from an external information mediator. (Id)
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`20.
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`Information mediators can use an exposure program to deliver complete images
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`(e.g. an image, a series of images or a Video clip) for display which would not require processing
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`by the control center.
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`(Id. at 12: 12-22.) These can be dynamically added to the exposure list by
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`5
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`the exposure handler. (Id) External information mediators can thus deliver a complete image for
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`display (an image, a series of images or a Video clip) which can be processed automatically and
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`inserted into the exposure list, or an administrator can select information from an external
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`mediator and process the information so that it can be inserted into the exposure list Via the
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`exposure handler. (Id. at 9:62-10:9.)
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`The ‘603 Patent
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`21.
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`On August 6, 2002, U.S. Patent Number 6,430,603, entitled “System for Direct
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`Placement of Commercial Advertising, Public Service Announcements and Other Content on
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`Electronic Billboard Displays” was duly and legally issued by the United States Patent and
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`Trademark Office. A true and correct copy of the ’603 Patth is attached as Exhibit C to this
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`Amended Complaint.
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`22.
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`The innovations described by the ’603 Patent “relate[] to systems permitting
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`advertisers to target geographical regions and demographic groups with ever changing, current
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`advertising content without
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`incurring the high fixed cost of traditional single-message
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`billboards.” (’603 Patent at 1:7-10.)
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`23.
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`A typical system can include a network that connects a central
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`information
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`processing center with a number of electronic displays. (Id. at 2:7; 2:54-56.) “The means for
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`transmitting content information” from the central information processing center “to the display
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`locations may take a number of forms.” (Id. at 3:31-32.) “[T]he means include: [a] High speed
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`cable [b] Satellite [c] Dedicated phone [d] High speed line (e.g., ISBN) [6] Cellular or PCS [f]
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`Internet
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`[g] Radio/radio pulse transmission [h] High speed optical fiber.” (Id. at 3:35-45.)
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`“[A]ny form” of network “may be utilized” depending on the system requirements “at various
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`locations within the networ ,” which can include combinations of the examples listed. (Id. at
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`3:32-33.)
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`24.
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`Plaintiff T-Rex Property AB is the assignee and owner of the right, title and
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`interest in and to the ’470 Patent, the ‘334 Patent, and the ‘603 Patent (collectively, the “Patents-
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`
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`Case 1:16—cv—04586—LTS—HBP Document 55-5 Filed 07/19/18 Page 8 of 27
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`In-Suit”), including the right to assert all causes of action arising under the Patents-In—Suit and
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`the right to any remedies for infringement.
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`BACKGROUND ON THE PRIOR ART AND THE ‘470 PATENT
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`25.
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`In 1994,
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`the traditional Out-of-Home advertising industry was in need of a
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`change, an evolutionary improvement. See Declaration of Mats Hylin (“Hylin Decl.”) at 11 8
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`(attached as Exhibit D, and hereby incorporated, in its entirety, by reference herein at paragraph
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`17). Mats Hylin, the first named inventor of the ’470 Patent, recognized that the “demands from
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`advertisers” were not being met; what advertisers wanted was “more flexibility and speed” and
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`“the possibility of changing the message” instead of “having the same advertisement [displayed]
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`during the whole period.” Id. This may be because advertisers wish to avoid a stagnant message,
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`or because advertisers desire campaign evaluation feedback —“the results of a first campaign are
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`fundamental in order to create the next campaign.” Id. at 1i 15. In addition to addressing these
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`revenue issues, distribution efficiencies were “one of the most important areas to create higher
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`margins.” Id. at 1i 6. One method to address this was through the use of digital advertising
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`copy—which could be distributed via “the intemet, or any other network”—rather than incur the
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`costs associated with physical distribution and display of paper or other printed advertising copy.
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`Id. at W 8-9.
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`26. With respect to the ’470 Patent and claim 25 in particular, claim 25 “solves
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`specific needs and problems over other technologies that existed in 1996.” Declaration of
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`Zaydoon Jawadi (“Jawadi Decl.”) 1i 22 (attached as Exhibit E, and hereby incorporated, in its
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`entirety, by reference herein at paragraph 18).
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`Such problems and shortcomings included
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`“controlling and coordinating digital signage displays in concrete, specific ways beyond merely
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`scheduling content to be displayed on remote screens.” Id. “Prior to the inventions disclosed in
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`claim 25 .
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`.
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`. there was no flexible way for external information mediators .
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`.
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`. to dynamically
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`control and coordinate, display devices located in different places.” Id. at 1i 23. “Content from
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`external information mediators could not be directly displayed; instead, displaying such content
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`required administrative processing and manual intervention to update the display systems.” Id.
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`27.
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`The inventions embodied in claim 25 “improved the operation of digital signage
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`that existed in 1996” by “impos[ing] meaningful
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`limitations” that “allow[ed] external
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`information mediator(s) to dynamically control and coordinate display devices located in
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`different places, extending the usefulness of the digital signage technology.” Id. at 111] 26-27.
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`“[C]laim 25 of the ’470 Patent incorporates unique, innovative, non-conventional, non-generic
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`elements” that work together to improve the operation of a digital signage system. Id. at 11 28.
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`“The functions, application, and implementations of these elements inherently and necessarily
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`are rooted in and require computer technology, communication technology, and digital display
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`technology in order to overcome specific problems arising in the realm of digital signage in
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`1996.” Id. at 1] 29. Importantly, “the claim goes beyond the mere concept of simply using a
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`computer to perform distributed signage.” Id. “This is because computers, communication
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`interfaces, and digital display devices are not ancillary or incidental additions but germane and
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`integral parts of the inventions disclosed by claim 25 of the ’470 Patent.” Id. The limitations of
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`claim 25 “relate to the functioning of hardware and software” that are “inextricably tied to digital
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`signage computer technology, communication technology, and digital display technology” such
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`that the “unique, innovative, non-conventional, non-generic” hardware and software incorporated
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`in claim 25 are used to achieve these technological innovations. Id. at W 28, 30.
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`28.
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`The physical combination of elements that are referenced in claim 25 represent an
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`innovation over the prior art. More particularly, claim 25 references an “information mediator.”
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`At the time of the invention,
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`in about the 1995 to 1996 time frame, the term “information
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`mediator,” within the context of the field of art, could have referred to “an agent between
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`producer and consumer of information” where the “agent could be a software component,
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`software with accompanying hardware, a system, an organization (such as advertising agency) or
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`an individual.” Id. at 1i 33. Claim 25 also references “location(s)” which at the time of the
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`invention could have referred, again within the context of the field of art,
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`to “a particular
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`8
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`physical or geographical place or position where the message or advertisement is displayed on an
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`electronic display device.” Id. at 11 34. Taking into account the meaning of these terms, as well as
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`the claim as a whole, implementation of claim 25 would require “industrial computers, servers,
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`PCs, networking routers or switches, networking cables, computer graphics capabilities, display
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`devices .
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`.
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`. database management systems as well as specialized software drivers to interface
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`between mediators and system computers, to decipher control lists, to create and update exposure
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`lists, and to decipher and act upon exposure lists.” Id. at 11 35. Such a combination of elements
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`represented a significant and non-conventional innovation over the prior art which resulted in an
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`improvement in the operation of digital signage. Id. at 11 38.
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`29.
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`“Furthermore, claim 25 .
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`.
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`. is distinct and different from the other claims of the
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`’470 Patent.” Id. at 11 37. “In particular, claim 25 .
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`.
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`. is distinct and different from claim 26 of the
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`’470 Patent.” Id. For example, “[c]laim 26 discloses a computerized control center,
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`communication interfaces, means for generating and dynamically updating an exposure list, a
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`means for displaying images and a computerized device situated at each location—limitations
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`that claim 25 does not disclose.” Id.
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`30.
`
`Claim 25 embodies an entirely new combination of special purpose and
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`interconnected physical equipment to present information publicly. The inventions embodied in
`
`claim 25 arose in a specialized context—back in or about the 1995 to 1996 time frame—and the
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`inventors came up with a specific solution, manifested in a concrete combination of devices,
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`interfaces, and software, networked together with physical displays viewable by the target
`
`audience, to resolve particular problems.
`
`31. With respect to claim 26 of the ’470 Patent, the inventions embodied in claim 26
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`“improved the operation of digital signage that existed in 1996” Id. at 11 45. “[C]laim 26 of the
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`’470 Patent incorporates unique, innovative, non-conventional, non-generic elements.” Id. at 11
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`47. These elements include a “computerized control center[,]
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`.
`
`.
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`. means (within the
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`computerized control center) for generating and dynamically updating an exposure list .
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`.
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`. [and]
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`computerized devices” which are situated at “a plurality of locations.” Id. at 1111 40, 47. The
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`9
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`computerized devices are “electronically coupled to the computerized control center” and
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`include a means “for displaying images in accordance with the exposure list.” Id. at 1] 47. The
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`limitations of claim 26 “relate to both the hardware and software technology for digital signage,
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`as well as to the functioning of hardware and software technology for digital signage” and are
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`“manifested in a concrete combination of devices, interfaces, and software, networked together
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`with physical displays viewable by the target audience.” Id. at 1]1] 41, 49.
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`32.
`
`The physical combination of elements that are referenced in claim 26 represent an
`
`innovation over the prior art. More particularly,
`
`in addition to “information mediator” and
`
`“location(s),” claim 26 references “communication interfaces.” At the time of the invention, in
`
`about the 1995 to 1996 time frame, the term communication interfaces, within the context of the
`
`field of art, could have referred to “electronic hardware, software, and protocols allowing
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`systems (such as computers) to communicate and exchange data.” Id. at 1] 54. Claim 26 also
`
`references a “computerized control center” which at the time of the invention could have
`
`referred, again within the context of the field of art, to “a computer or set of computers that
`
`control and coordinate the interaction between networked computers or equipment.” Id. at 1] 55.
`
`Such a combination of elements represented a significant and non-conventional innovation over
`
`the prior art which resulted in an improvement in the operation of digital signage. Id. at 1] 59.
`
`33.
`
`Claim 26 embodies an entirely new combination of special purpose and
`
`interconnected physical equipment to present information publicly. The inventions embodied in
`
`claim 26 arose in a specialized context—back in or about the 1995 to 1996 time frame—and the
`
`inventors came up with a specific solution, manifested in a concrete combination of devices,
`
`interfaces, and software, networked together with physical displays viewable by the target
`
`audience, to resolve particular problems in digital technology.
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`BACKGROUND ON THE ‘334 PATENT
`
`34.
`
`Claim 22 the ’334 Patent “solves specific needs and problems over other
`
`technologies that existed in 1996.”
`
`Jawadi Decl. at 1] 63. Such problems and shortcomings
`
`10
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`
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`included “controlling and coordinating digital signage displays in concrete, specific ways beyond
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`merely scheduling content to be displayed on remote screens.” Id. More specifically, “[p]rior to
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`the inventions disclosed in claim 22 .
`
`.
`
`. there was no flexible way for external information
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`mediators .
`
`.
`
`. to dynamically control and coordinate, in real time, display devices located in
`
`different places.” Id. at 1i 64. “Content from external information mediators could not be directly
`
`displayed, and particularly not in real time or in near real time; instead, displaying such content
`
`required administrative processing and manual intervention to update the display systems.” Id.
`
`35.
`
`The inventions embodied in claim 22 “improved the operation of digital signage
`
`that existed in 1996” by “impos[ing] meaningful
`
`limitations” that “allow[ed] external
`
`information mediator(s) to dynamically control and coordinate, in real time, display devices
`
`located in different places, extending the usefiilness of the digital signage technology.” Id. at 1111
`
`67-68. “[C]laim 22 of the ’334 Patent incorporates unique, innovative, non-conventional, non-
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`generic elements” that work together to improve the operation of a digital signage system. Id. at
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`1i 69. “The functions, application, and implementations of these elements inherently and
`
`necessarily are rooted in and require computer technology, communication technology, and
`
`digital display technology in order to overcome specific problems arising in the realm of digital
`
`signage in 1996.” Id. at 1] 70. Importantly, “the claim goes beyond the mere concept of simply
`
`using a computer
`
`to perform distributed signage.” Id.
`
`“This
`
`is because computers,
`
`communication interfaces, and digital display devices are not ancillary or incidental additions but
`
`germane and integral parts of the inventions disclosed by claim 22 of the ’334 Patent.” Id. The
`
`limitations of claim 22 “relate to the functioning of hardware and software” that are “inextricably
`
`tied to digital signage computer technology, communication technology, and digital display
`
`technology” such that the “unique, innovative, non-conventional, non-generic” hardware and
`
`software incorporated in claim 22 are used to achieve these technological innovations. Id. at llll
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`69, 71.
`
`36.
`
`The physical combination of elements that are referenced in claim 22 represent an
`
`innovation over the prior art. Taking into account the meaning of these elements, as well as the
`
`11
`
`
`
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`claim as a whole, implementation of claim 22 would require “industrial computers, servers, PCs,
`
`networking routers or switches, networking cables, computer graphics capabilities, display
`
`devices .
`
`.
`
`. database management systems as well as specialized software drivers to interface
`
`between mediators and system computers, to decipher control lists, to create and update exposure
`
`lists, and to decipher and act upon exposure lists.” Id. at 74. Such a combination of elements
`
`represented a significant and non-conventional innovation over the prior art which resulted in an
`
`improvement in the operation of digital signage. Id. at 1] 77.
`
`37.
`
`“Furthermore, claim 22 of the ’334 Patent is distinct and different from the other
`
`claims of the ’334 Patent as well as being distinct and different from the claims of the ’470
`
`Patent.” Id. at 1] 76. “In particular, claim 22 .
`
`.
`
`. is distinct and different from claim 32 of the ’334
`
`Patent. Id. For example, “[c]laim 32 discloses computerized control center means (hardware
`
`and/or software .
`
`.
`
`.), communication interfaces (of the control center), computerized means
`
`(hardware and/or software .
`
`.
`
`. ) .
`
`.
`
`. and exposure handler means (hardware and/or software .
`
`.
`
`. )
`
`—limitations that claim 22 does not disclose.” Id.
`
`38.
`
`Claim 22 embodies an entirely new combination of special purpose and
`
`interconnected physical equipment to present information publicly. The inventions embodied in
`
`claim 22 arose in a specialized context—back in or about the 1995 to 1996 time frame—and the
`
`inventors came up with a specific solution, manifested in a concrete combination of devices,
`
`interfaces, and software, networked together with physical displays viewable by the target
`
`audience, to resolve particular problems.
`
`39.
`
`The inventions embodied in claim 32 also “improved the operation of digital
`
`signage that existed in 1996” Id. at 11 84. “[C]laim 32 of the ’334 Patent incorporates unique,
`
`innovative, non-conventional, non-generic elements.” Id. at 11 86. These elements include “a
`H “
`
`computerized control center means,
`
`computerized means .
`
`.
`
`. for coordinating and controlling
`
`electronic displays” and “exposure handler means .
`
`.
`
`. for creating and updating an exposure
`
`list.” Id. The limitations of claim 32 “relate to both the hardware and software technology for
`
`12
`
`
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`digital signage, as well as to the functioning of hardware and software technology for digital
`
`signage.” Id. at 11 88.
`
`40.
`
`The physical combination of elements that are referenced in claim 32 represent an
`
`innovation over the prior art. Taking into account the meaning of these elements, as well as the
`
`claim as a whole, the arrangement of claim 32 would require “industrial computers, servers, PCs,
`
`networking routers or switches, networking cables, computer graphics capabilities, display
`
`devices .
`
`.
`
`. database management systems as well as specialized software drivers to interface
`
`between mediators and system computers, to decipher control lists, to create and update exposure
`
`lists, and to decipher and act upon exposure lists.” Id. at 93. “Due to the application of outdoor
`
`advertising, additional specialized equipment, such as special duty and/or ruggedized computers
`
`(which could include ruggedized media players, for example) could be necessary.” Id. Such a
`
`combination of elements represented a significant and non-conventional innovation over the
`
`prior art which resulted in an improvement in the operation of digital signage. Id. at 11 96.
`
`41.
`
`“Furthermore, claim 32 of the ’334 Patent .
`
`.
`
`. is distinct and different from the
`
`claims of the ’470 Patent.” Id. at 11 95.
`
`BACKGROUND ON THE ‘603 PATENT
`
`42.
`
`Claim 42 the ’603 Patent “solves specific needs and problems that existed in
`
`1999.” Jawadi Decl. 1i 101. Such problems and shortcomings included “targeting geographical
`
`regions and demographic groups with ever changing, current advertising content in concrete,
`
`specific ways beyond merely scheduling content to be displayed on remote screens.” Id. More
`
`specifically, “the inventions disclosed in claim 42” allowed “content providers .
`
`.
`
`. to directly
`
`access a network of electronic displays located in various geographic locations and to directly
`
`send their own content—which could be formatted for the use of a split screen display—to the
`
`network to be displayed at locations and times selected by the providers.” Id. at 11 102.
`
`43.
`
`“Claim 42 incorporates non-conventional, non-generic hardware and software that
`
`imposes meaningful limitations to improve on the existing 1999 era digital signage technology.”
`
`13
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`
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`Id. “The functions, application, and implementations of these elements inherently and necessarily
`
`are rooted in and require computer technology, communication technology, and digital display
`
`technology in order to achieve specific solutions in the realm of digital signage.” Id. at 11 104.
`
`Importantly, “the claim goes beyond the mere concept of simply using a computer to perform
`
`distributed signage.” Id. “This because computers, communication interfaces, and digital display
`
`devices are not ancillary or incidental additions but germane and integral parts of the inventions
`
`disclosed by claim 42 of the ’603 Patent. Id. The limitations of claim 42 “relate to both the
`
`hardware and software technology for digital signage, as well as to the functioning of hardware
`
`and software technology for digital signage” that are “inextricably tied to digital signage
`
`computer technology, communication technology, and digital display technology” such that the
`
`“unique,
`
`innovative, non-conventional, non-generic” hardware and software incorporated in
`
`claim 42 are used to achieve these technological innovations. Id. at 1111 103, 105.
`
`44.
`
`“Furthermore, claim 42 of the ’603 Patent is distinct and different from the claims
`
`of the ’334 Patent and it is distinct and different from the claims of the ’470 Patent. Id. at 1i 108.
`
`45.
`
`Claim 42 embodies a