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`CustomPlay
`CustomPlay
`Exhibit 2011
`Exhibit 2011
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 1 of 22
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
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`CUSTOMPLAY, LLC,
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`v.
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`AMAZON.COM, INC.,
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`Defendant.
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`_________________________________/
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`
`
`Plaintiff,
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`CASE NO. 9:17-cv-80884-KAM
`
`
`CUSTOMPLAY’S MOTION FOR PRELIMINARY INJUNCTION
`AND REQUEST FOR EVIDENTIARY HEARING
`
`
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`

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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 2 of 22
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`Pursuant to Rule 65 of the Federal Rules of Civil Procedure, plaintiff CustomPlay, LLC
`
`(“CustomPlay”) hereby moves for entry of an order enjoining defendant Amazon.com, Inc.
`
`(“Amazon”) from continuing to make, use, offer to sell, or sell its X-Ray feature for movies and
`
`TV shows (“X-Ray”) because, as more fully set forth below, X-Ray infringes three of
`
`CustomPlay’s patents: U.S. Patent Nos. 8,494,346 B2 (the “’346 patent”); 9,124,950 B2 (the “`950
`
`patent”); and 9,380,282 B2 (the “`282 patent”) (collectively, the “CustomPlay Patents”). In
`
`support of this motion, CustomPlay submits the accompanying Declaration of Dr. Clifford Reader
`
`and Declaration of Max Abecassis, and states as follows:
`
`I.
`
`INTRODUCTION
`
`CustomPlay has developed and brought to market new, patented technologies enhancing
`
`
`
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`the way audiovisual content is presented to, and used by, viewers. Among those technologies are
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`numerous patented features allowing viewers to obtain information, interactively and in real time
`
`during the presentation of the content, about virtually anything in the images and sounds presented.
`
`Thus, while viewing audiovisual content, viewers are able to instantaneously obtain information
`
`about such things as actors or characters, scene locations, music in the soundtrack, or chattels (e.g.,
`
`clothing, jewelry, cars), and even to proceed with purchasing items they see or hear. The patented
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`technologies can be used in streaming video services as well as other methods of content delivery.
`
`
`
`CustomPlay does not itself offer streaming video services. But in addition to developing
`
`the technology in the first place, CustomPlay is in the business of creating the data overlays that
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`associate responsive information with the audiovisual content. Such painstaking mapmaking is
`
`indispensable to any serious commercial implementation of the technology.
`
`
`
`Amazon offers streaming video services. CustomPlay approached Amazon about a
`
`strategic partnership in which Amazon would implement CustomPlay’s patented technologies.
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`1
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 3 of 22
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`Amazon disregarded CustomPlay, but then proceeded to enhance its video streaming services with
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`exactly the capabilities that CustomPlay not only had patented but had proposed to Amazon in
`
`good faith. The technology is, after all, a tight fit with Amazon’s ambition to capitalize on
`
`synergies between its video streaming services and its other businesses, which include a vast
`
`movie-information database and, of course, the sale of virtually anything and everything in the
`
`river of commerce.
`
`
`
`CustomPlay continues to seek an honest strategic partnership, particularly one in which
`
`CustomPlay contributes the mapmaking functions while a partner carries out the video-streaming
`
`functions. Amazon evidently performs both of those functions itself, and in so doing, has severely
`
`damaged the market for the sort of partnership that CustomPlay has assiduously sought.
`
`
`
`A preliminary injunction is the only way to stop Amazon from pillaging CustomPlay’s
`
`technology and destroying the business strategy that CustomPlay has rightfully planned for itself.
`
`
`
`
`
`II.
`
`FACTUAL BACKGROUND
`
`a. CustomPlay
`
`CustomPlay is a South Florida technology enterprise with nineteen employees in Delray
`
`Beach. Abecassis Decl. ¶ 3. CustomPlay technologies are the result of its substantial investments
`
`in research and development. Id. ¶ 14. CustomPlay has developed software applications that
`
`provide in-depth information about video content, such as movies, to viewers interactively during
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`presentation of the video content. Abecassis Decl. ¶¶ 4 - 13.
`
`
`
`Since 2014 CustomPlay has made these applications available for download to end-users
`
`on its website. See generally http://www.customplay.com (last accessed July 24, 2017).
`
`Beginning in 2015, CustomPlay’s technology has been available for download at Apple’s App
`
`Store and Android’s Google Play under the application name CustomPlay. Abecassis Decl. ¶ 11.
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`2
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 4 of 22
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`CustomPlay’s applications practice and are covered by the CustomPlay Patents.
`
`
`
`b. The CustomPlay Patents At Issue
`
`CustomPlay is the owner of the ‘346 patent, entitled “Identifying a Performer During a
`
`Playing of a Video.” The ‘346 patent teaches a feature for “providing a user, during playback of
`
`a segment from within a video, an identification of the performer/character that is depicted in that
`
`segment . . . to satisfy the real-time informational interests of a user and to deliver a more informed
`
`video viewing experience.” ‘346 patent, col. 1 ln. 61 to col. 2 ln. 4. The ’346 patent refers to this
`
`as the “Who” feature. The “Who” feature “enables the display of information identifying the
`
`performers and characters” depicted in a particular segment of a video. Id., col. 2, ll. 36-39. The
`
`‘346 patent’s specification discloses that “[t]o activate the Who feature, a user may be provided a
`
`number of means, including, onscreen playback controls, remote control keys, voice control, other
`
`user interfaces, and/or any combinations of these methodologies and means.” Id. col. 8, ll. 53-57.
`
`“[S]uperimposed on [a] frame of video [is] a visual depiction of each of the characters and
`
`corresponding performer's and character's name.” Id., col. 6, ll. 34-36. “[T]he visual depiction is
`
`a current image of the performer.” Id., col. 28, ln. 52 to col. 32, ln. 23.
`
`CustomPlay is also the owner of the ’950 patent, entitled “Providing Item Information
`
`Notification During Video Playing.” The inventions taught in the ’950 patent include technology
`
`“to provide, during a playing of a video, an indication that item information is available for an item
`
`being currently depicted within the video.” ‘950 patent, col. 2, ll. 13-16. The patent teaches, for
`
`example, that:
`
`FIG. 1D is a representation of a video frame 101 within the motion
`picture at a subsequent instance within the same clip that includes
`the video frame 100 shown in FIG. 1C. In this case, the camera has
`focused on the girl 120 and the man 130. The “90 Day Balloons”
`113 depicted in the video frame 100 of FIG. 1A is not depicted in
`the frame 101, and only the ream [sic] of the “Top Hat” 133 of FIG.
`
`3
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 5 of 22
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`1A is depicted in the frame 101. In this example, the item
`identification routines are configured to search a plurality of
`segment definitions to identify segment definitions that are
`responsive to the request location and a predetermined play period
`prior to the request location. In this instance, since the segments
`definitions for each of the noteworthy items are responsive to either
`the request location or the predetermined play period prior to the
`request location, an image and textual identification are nonetheless
`provided for the “90 Day Balloons”, the “Stripe Dress”, and the
`“Top Hat” (FIG. 1D 112, 113, 122, 123, 132, 133).
`
`Id., col. 9, ln. 61 to col. 10, ln. 10. See also id. claims 1-20.
`
`Further, CustomPlay is the owner of the ’282 patent, entitled “Providing Item Information
`
`During Video Playing.” The inventions taught in the ’282 patent include technology to “satisfy
`
`the real-time informational interests of a user and to deliver a more informed and entertaining
`
`video viewing experience.” ’282 patent, col. 1, ln. 65 to col. 2, ln 7. The ‘282 patent discloses:
`
`During a playing of a video, a user may desire to obtain item
`identification information and/or shopping information for an item
`being depicted within the video. In such situations, it is
`advantageous to be able to provide, a user during a playing of a
`video, item information for certain items being depicted, especially
`where those items are product placements.
`
`Id., col. 13, ll. 26-32. “A musical note icon may be displayed in connection with a purchasable
`
`musical item, e.g., a song being currently played within the video.” Id,. col. 7, ll. 53-56. See also
`
`id., col. 33, ln. 16 to col. 37, ln. 10.
`
`c. Amazon’s Infringing X-Ray for Movies & TV Shows
`
`Amazon operates a video-on-demand service titled Amazon Video that offers users a
`
`library of streaming television shows and films for rental or purchase. Amazon’s X-Ray feature
`
`is available on numerous film and television show titles in the Amazon Video library. Amazon’s
`
`website describes X-Ray as follows: “X-Ray for Movies & TV Shows lets you access actor bios,
`
`background information, and more from the Internet Movie Database (IMDb) directly onscreen.”
`
`4
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 6 of 22
`
`What
`
`is
`
`X-Ray
`
`for Movies
`
`&
`
`TV
`
`Shows?,
`
`Amazon.com,
`
`Inc.,
`
`https://www.amazon.com/gp/help/customer/display.html?nodeId=201423010 (last visited July
`
`26, 2017).
`
`The information available to viewers through Amazon’s X-Ray feature is supplied by
`
`IMDb, an online database of information related to films and television programs, including cast,
`
`production crew, fictional characters, biographies, plot summaries, trivia, and reviews. IMDb is a
`
`wholly owned subsidiary of Amazon.
`
`Functionally, Amazon’s X-Ray feature is based on an unencrypted file that contains the
`
`information to be displayed (i.e., what actor is appearing on screen, which song is being played in
`
`the video, trivia and other information). Reader Decl. ¶¶ 32-40. X-Ray data files are used on a
`
`playback device alongside Amazon Video content (i.e., a film or television show). Id. In the X-
`
`Ray data files, data is organized into segments that have a start and an end time, measured in
`
`milliseconds. Id. Each segment contains a section denoting onscreen information (e.g., trivia, cast
`
`member information) to be displayed for the entirety of that segment. The onscreen information
`
`related to each segment is displayed during playback. Id.
`
`The Complaint alleges that Amazon’s X-Ray feature infringes claims 4-6 and 10-20 of the
`
`‘346 patent, claims 2, 4, 6, 14, 16, and 19 of the ‘950 patent and claims 4, 7-9, 12, 14, 16, 18, and
`
`19 of the ‘282 patent. This motion concerns only Amazon’s infringement of claims 4, 14 and 17
`
`of the ‘346 patent, claim 19 of the ‘950 patent, and claim 19 of the ‘282 patent.
`
`As more fully set forth below, and as supported by the opinion of CustomPlay’s expert,
`
`Amazon’s X-Ray clearly infringes each of these claims.
`
`
`
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`5
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 7 of 22
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`III. ARGUMENT
`
`This Court has the discretion to issue an injunction to “prevent the violation of any rights
`
`secured by patent.” 35 U.S.C. § 283; see also eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,
`
`392 (2006) (stating that well-established principles of equity apply to issuance of injunctions under
`
`the Patent Act). By issuing a preliminary injunction, the Court preserves the status quo by
`
`preventing infringement of one or more patents while a decision on the merits of the case remains
`
`pending. Abbott Labs. v. Sandoz, 544 F.3d 1341, 1344-45 (Fed. Cir. 2008).
`
`A plaintiff seeking a preliminary injunction must satisfy four factors: (1) that it is likely to
`
`succeed on the merits; (2) that it is likely to suffer irreparable harm in the absence of preliminary
`
`relief; (3) that the balance of equities tips in its favor; and (4) that an injunction is in the public
`
`interest. AstraZeneca LP v. Apotex Corp., 633 F.3d 1042, 1050 (Fed. Cir. 2010) (citing Winter v.
`
`Natural Res. Def. Council, Inc., 555 U.S. 7, 25 (2008)); see also Trebro Mfg., Inc. v. Firefly Equip.,
`
`LLC, 748 F.3d 1159, 1165 (Fed. Cir. 2014). CustomPlay is able to satisfy each of the requisite
`
`prongs, and is entitled to a preliminary injunction in its favor and against Amazon X-Ray.
`
`1.
`
`CustomPlay is Likely to Succeed on the Merits of its Claims for Patent
`Infringement
`
`The federal patent statute presumes that all patents are valid. 35 U.S.C. § 282. This
`
`
`
`presumption of validity applies at the preliminary injunction stage and, indeed, every stage of the
`
`litigation. Canon Computer Sys. Inc. v. Nu-Kote Int’l, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998).
`
`In the event that Amazon attempts to oppose this motion by challenging the validity of the
`
`CustomPlay patents, Amazon will bear the heavy burden of proving, by clear and convincing
`
`evidence, that the CustomPlay patents are invalid. Purdue Pharma L.P. v. Boehringer Ingelheim
`
`GmbH, 237 F.3d 1359, 1365 (Fed. Cir. 2001).
`
`The Court is not required to resolve the validity of the CustomPlay patents at the
`
`6
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 8 of 22
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`preliminary injunction stage; rather, the Court should “make an assessment of the persuasiveness
`
`of the challenger’s evidence, recognizing that it is doing so without all evidence that may come
`
`out at trial.” New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 882-83 (Fed. Cir.
`
`1992). Taking into consideration that every patent is presumed valid, if Amazon “fails to identify
`
`any persuasive evidence of invalidity, the very existence of [CustomPlay’s] patents satisfies [its]
`
`burden on validity.” Purdue Pharma, 237 F.3d at 1365.
`
`Having established that the CustomPlay patents are presumptively valid at the preliminary
`
`injunction stage, CustomPlay must establish only that it is likely to succeed on the merits of its
`
`underlying claims for patent infringement. Abbott Labs., 544 F.3d at 1358. In this regard,
`
`CustomPlay need only demonstrate that at least one claim of one of its presumptively-valid patents
`
`has been infringed by Amazon.
`
`a. Amazon’s Infringement of the `346 Patent
`
`As discussed above, CustomPlay’s ‘346 patent covers a “Who” feature that enables the
`
`display of information identifying the performers and characters depicted in a particular video
`
`segment. Amazon describes its X-Ray feature as follows:
`
`Have you ever watched a movie or TV show and wondered, “Who’s
`that guy?”, “What’s she been in?”, or “What is that song?” Never
`have that problem again. Amazon today announced that X-Ray—a
`customer-favorite feature since it launched on Fire tablets—is now
`available directly on your TV screen using Amazon Fire TV and
`Fire TV Stick. Exclusive to Amazon Instant Video, X-Ray for
`Movies and TV Shows is powered by IMDb—the #1 movie website
`in the world, with a database of more than 180 million data items,
`plus over 200 million unique monthly visitors worldwide.
`
`For the First Time Ever, X-Ray for Movies and TV Shows Now Available Directly on Your TV – Answer
`
`the Classic Movie-Watching Question “Who’s That Guy?” with Your Amazon Fire TV, Business Wire (Apr.
`
`13, 2015, 9:00 a.m.), http://www.businesswire.com/news/home/20150413005383/en/Time-X-Ray-
`
`7
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 9 of 22
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`Movies-TV-Shows-TV-%E2%80%94. Amazon’s X-Ray feature directly infringes claims 4, 14, and
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`17 of the ’346 patent.
`
`i. Direct Infringement of Method Claims 14 and 17 under § 271(a)
`
`Amazon’s X-Ray feature embodies the methods recited in claims 14 and 17 of the ’346
`
`patent. Claim 14 of the ’346 patent recites:
`
`A method of processing data, the data comprising: (i) a plurality of
`segment definitions each defining a video segment within a video;
`(ii) a name of a performer of a character depicted within a defined
`video segment; and (iii) a reference to a visual depiction of a
`performer of a depicted character; the method comprising the steps
`of:
`
`receiving, from a user, during a playing of a video, a request
`for information for identifying a performer of a character that is
`depicted during the playing of the video;
`identifying a current location in the video;
`identifying a segment definition that includes the identified
`location;
`identifying a name of a performer of a character depicted
`within a video segment defined by the identified segment definition;
`retrieving, responsive to the reference, a visual depiction of
`the performer of the depicted character; and
`providing, the user, the identified name of the performer of
`the depicted character, and the visual depiction of the performer of
`the depicted character.
`‘346 patent, col. 30, ln. 51 to col. 31, ln. 3.
`
`Amazon’s X-Ray performs each step recited in claim 14 of the ’346 patent. Reader Decl.
`
`¶¶ 59-62. Amazon’s X-Ray receives from a user, during the playback of a video like a movie or
`
`TV show, a request for information for identifying a performer of a character that is depicted
`
`during the playing of the video. Id. After receiving this request, Amazon’s X-Ray identifies: a
`
`current location in the video, a segment definition that includes the identified location, and a name
`
`of a performer of a character depicted within a video segment defined by the identified segment
`
`8
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`

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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 10 of 22
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`definition. Id. Thereafter, Amazon’s X-Ray: retrieves, responsive to the reference, a visual
`
`depiction of the performer of the depicted character; provides the user with the identified name of
`
`the performer of the depicted character; and provides the user with a visual depiction of the
`
`performer of the depicted character.
`
`Similarly, claim 17 of the ’346 patent covers the following method:
`
`
`A method of processing data, the data comprising: (i) a name of a
`performer of a character depicted within a video frame of a video;
`and (ii) a reference to a visual depiction of the performer of the
`depicted character; the method comprising the steps of:
`receiving, from a user, during a playing of a video, a request
`for information for identifying a performer of a character that is
`depicted during the playing of the video;
`identifying a current location in the video;
`identifying a name of a performer associated with the
`identified location;
`retrieving, responsive to the reference, a visual depiction of
`the performer; and
`providing, the user, the identified name of the performer, and
`the visual depiction of the performer.
`‘346 patent, col. 31, ll. 10-24.
`
`Amazon’s X-Ray performs each step recited in claim 17 of the ’346 patent. Reader Decl.
`
`¶¶ 63-78. Amazon’s X-Ray receives, from a user, during a playing of a video (e.g., a movie or TV
`
`show), a request for information for identifying a performer of a character that is depicted during
`
`the playing of the video. Id. ¶¶ 69-71. Thereafter, Amazon’s X-Ray identifies a current location
`
`in the video, and a name of a performer associated with the identified location. Id. ¶¶ 72-73.
`
`Amazon’s X-Ray thereafter retrieves, responsive to the reference, a visual depiction of the
`
`performer and provides the user the identified name of the performer, and the visual depiction of
`
`the performer. Id. ¶¶ 74-78.
`
`
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`9
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 11 of 22
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`
`
`ii.
`
`Direct Infringement of Apparatus Claim 4 Under § 271(a)
`
`Amazon makes, offers to sell, and sells various generations of digital media players under
`
`the brand name “Fire TV.” Reader Decl. ¶¶ 27-29. Similarly, Amazon makes, offers to sell, and
`
`sells various generations of tablet computers under the brand name “Kindle Fire.” The Fire TV
`
`and Kindle Fire tablet are collectively referred to hereinafter as “Amazon Devices.” Amazon
`
`Devices are configured with the capability for playing X-Ray-enabled video titles streamed from
`
`the Amazon Video library. Amazon Devices are capable of performing each of the steps recited
`
`in claim 4 of the ‘346 patent. Id. ¶¶ 42-57. Accordingly, Amazon Devices infringe claim 4 of the
`
`’346 patent in violation of 35 U.S.C. § 271(a). Id. Claim 4 of the ’346 patent recites:
`
`An apparatus capable of processing data, the data comprising: (i) a
`plurality of segment definitions each defining a video segment
`within a video; (ii) a name of a performer of a character depicted
`within a defined video segment; and (iii) a reference to a visual
`depiction of a performer of a depicted character; the apparatus
`performs the steps of:
`receiving, from a user, during a playing of a video, a request
`for information for identifying a performer of a character that is
`depicted during the playing of the video;
`identifying a current location in the video;
`identifying a segment definition that includes the identified
`location;
`identifying a name of a performer of a character depicted
`within a video segment defined by the identified segment definition;
`retrieving, responsive to the reference, a visual depiction of
`the performer of the depicted character; and
`providing, the user, the identified name of the performer of
`the depicted character, and the visual depiction of the performer of
`the depicted character.
`‘346 patent, col. 29, ll. 20-40.
`
`
`
`Amazon Devices are capable of receiving from a user, during the playing of a video (such
`
`as a TV show or movie), a request for information for identifying a performer of a character that
`
`10
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 12 of 22
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`is depicted during the playing of the video. Id. ¶¶ 47-5. Amazon Devices are capable of then
`
`identifying: a current location in the video; a segment definition that includes the identified
`
`location; and the name of a performer of a character depicted within the user-selected video
`
`segment. Id. ¶¶ 53-54. Thereafter, Amazon Devices are capable of retrieving a visual depiction
`
`of the performer of the depicted character. Id. ¶¶ 55-57. Amazon Devices are capable of then
`
`providing users with the name of the performer of the depicted character and a visual depiction of
`
`the performer of the depicted character. Id.
`
`b. Amazon’s Infringement of the `950 Patent
`
`Amazon directly infringes at least apparatus claim 19 of the ‘950 patent pursuant to 35
`
`U.S.C. § 271(a). As previously discussed, Amazon Devices stream content from the Amazon
`
`Video Library. Claim 19 of the ’950 patent recites:
`
`An apparatus capable of processing data and instructions executable
`by a processor; the apparatus, when executing the instructions,
`performs the steps of:
`retrieving a video frame identifier that is responsive to a play
`location within a playing of a video;
`displaying, responsive to the video frame identifier, an initial
`indication that item information is available that is responsive to the
`play location;
`retrieving a subsequent video frame identifier that is
`responsive to a subsequent play location;
`displaying, responsive to the subsequent video frame
`identifier and contemporaneously with the displaying of the initial
`indication, a subsequent indication that item information is available
`that is responsive to the subsequent play location;
`receiving, following the displaying of the subsequent
`indication, a request responsive to the initial indication, for item
`information; and
`displaying item information associated with the initial
`indication that item information is available.
`‘950 patent, col. 37, ln. 13 to col. 38, ln. 11.
`
`11
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 13 of 22
`
`Amazon Devices perform the functionality of each claim limitation present in claim 19 of
`
`the ’950 patent. Reader Decl. ¶¶ 79-95. Amazon Devices retrieve a video frame identifier that is
`
`responsive to a play location within a playing of a video. Id. ¶¶ 85-86. Thereafter, Amazon
`
`Devices: display, responsive to the video frame identifier, an initial indication that item
`
`information is available that is responsive to the play location; retrieve a subsequent video frame
`
`identifier that is responsive to a subsequent play location; and display, responsive to the subsequent
`
`video frame identifier and contemporaneously with the displaying of the initial indication, a
`
`subsequent indication that item information is available that is responsive to the subsequent play
`
`location. Id. ¶¶ 87-90. Amazon Devices then receive, following the displaying of the subsequent
`
`indication, a request responsive to the initial indication for item information. Id. ¶¶ 91-95. Finally,
`
`Amazon Devices display item information associated with the initial indication that item
`
`information is available. Id.
`
`c. Amazon’s Infringement of the `282 Patent
`
`Amazon infringes at least apparatus claim 19 of the ‘282 patent pursuant to 35 U.S.C. §
`
`271(a). As previously discussed, Amazon Devices stream content from the Amazon Video
`
`Library. Claim 19 of the ’282 patent recites:
`
`An apparatus capable of processing data and instructions executable
`by a processor; the apparatus, when executing the instructions,
`performs the steps of:
`receiving, from a user during a playing of a video, a request
`for information relating to a depiction within the video;
`identifying a request location that is responsive to the request
`for information;
`retrieving a first video frame identifier that is responsive to
`the request location, and contemporaneously retrieving a second
`video frame identifier that is different from the first video frame
`identifier and that is responsive to a location that is prior to the
`request location; and
`displaying information associated with the first video frame
`
`12
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 14 of 22
`
`information
`contemporaneously displaying
`and
`identifier,
`associated with the second video frame identifier that is different
`from the information associated with the first video frame identifier.
`‘282 patent, col. 36, ln. 58 to col. 37, ln. 7.
`
`Amazon Devices are capable of performing the functionality of each claim limitation
`
`present in claim 19 of the ’282 patent. Reader Decl. ¶¶ 96-117. Amazon Devices are capable of
`
`receiving, from a user during a playing of a video, a request for information relating to a depiction
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`within the video. Id. ¶¶ 109-110. Thereafter, Amazon Devices are capable of: identifying a request
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`location that is responsive to the request for information; and retrieving a first video frame
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`identifier that is responsive to the request location and, contemporaneously, a second video frame
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`identifier that is different from the first video frame identifier and that is responsive to a location
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`that is prior to the request location. Id. ¶¶ 111-114. Amazon Devices are capable of displaying
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`information associated with the first video frame identifier and, contemporaneously, information
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`associated with the second video frame identifier that is different from the information associated
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`with the first video frame identifier. Id. ¶¶ 115-117.
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`
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`2.
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`CustomPlay Will Suffer Irreparable Harm Without An Injunction
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`In the patent-infringement context, “[i]rreparable injury encompasses different types of
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`losses that are often difficult to quantify, including lost sales and erosion in reputation and brand
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`distinction.” Douglas Dynamics, LLC v. Buyers Prods. Co., 717 F.3d 1336, 1344 (Fed. Cir. 2013).
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`These various forms of harm are entwined with loss of the exclusivity that is the foundation of
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`patent law. U.S. Const. art. I, § 8, cl. 8; Douglas Dynamics, 717 F.3d at 1345 (“Exclusivity is
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`closely related to the fundamental nature of patents as property rights. It is an intangible asset that
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`is part of a company’s reputation, and here, Douglas’s exclusive right to make, use, and sell the
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`patented inventions is under attack by Buyers’s infringement.”).
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`CustomPlay satisfies the irreparable injury factor based on Amazon’s infringement of
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 15 of 22
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`CustomPlay’s right to exclude and based on the injury that the infringement causes CustomPlay’s
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`reputation as an innovator. Absent an injunction, Amazon will likely continue its infringement.
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`Monetary damages are not adequate to compensate CustomPlay for its damages, which are not
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`merely financial.
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`a. The Injury to CustomPlay’s Right to Exclude is Irreparable
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`Patent rights are rooted in the Constitution’s grant of authority for Congress to “secur[e]
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`for limited Times to . . . Inventors the exclusive Right to their respective . . . Discoveries.” U.S.
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`Const. Art. I, § 8, cl. 8. To effectuate that authorization, “Congress has enacted patent laws
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`rewarding inventors with a limited monopoly.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.
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`Ct. 2120, 2124 (2014). The patentee obtains the right to invoke the “State's power” to prevent
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`others from engaging in certain activities. Zenith Radio Corp. v. Hazeltine Research, Inc., 89 S.Ct.
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`1562, 23 L.Ed.2d 129 (1969). Those activities include “making, using, offering for sale, or selling
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`the invention throughout the United States or importing the invention into the United States,” 35
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`U.S.C. § 154(a)(1), and if the invention is a process, “using, offering for sale or selling throughout
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`the United States,” id.
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`Infringement of the patentee’s right to exclude is an “injury” that is often irreparable,
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`because a patentee’s intentions for its innovation do not necessarily consist of merely seeking rent
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`from would-be trespassers. As Chief Justice Roberts explained in his eBay concurrence:
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`From at least the early 19th century, courts have granted injunctive
`relief upon a finding of infringement in the vast majority of patent
`cases. This “long tradition of equity practice” is not surprising, given
`the difficulty of protecting a right to exclude through monetary
`remedies that allow an infringer to use an invention against the
`patentee's wishes.
`eBay, 547 U.S. at 395 (Roberts, C.J., concurring).
`
`
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`CustomPlay has developed software applications that provide in-depth information to
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`Case 9:17-cv-80884-KAM Document 5 Entered on FLSD Docket 07/27/2017 Page 16 of 22
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`movie viewers while they watch a movie. Abecassis Decl. ¶¶ 4-13. These applications provide
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`contextual information that automatically identifies performers, locations, music and exceptional
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`items, in video content, as it is displayed on screen. Id. CustomPlay’s business model centers on
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`the ability to partner with entertainment content providers, showcasing its technology as a value-
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`added feature that end users of content providers can enjoy. Id. at ¶ 15. The technology for
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`CustomPlay’s movie companion applications is cutting edge and the marketplace for such
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`technology is therefore nascent. In a business-to-business marketplace that is young and this
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`complex, it is difficult, if not impossible, to accurately value CustomPlay’s right to exclude.
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`Indeed, other courts considering requests for injunctive relief have expressed the view that the
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`violation of a patent owner’s right to exclude can present a situation where monetary damages
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`cannot adequately compensate the patent holder for that injury:
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`For example, when an infringer saturates the market for a patented
`invention with an infringing product or damages the patent holder's
`good will or brand name recognition by selling infringing products,
`that infringer violates the patent holder's exclusionary right in a
`manner that cannot be compensated through monetary damages.
`This is because it is impossible to determine the portions of the
`market the patent owner would have secured but for the infringer's
`actions or how much damage was done to the patent owner's brand
`recognition or good will due to the infringement.
`
`
`Commonwealth Sci. & Indus. Research Org. v. Buffalo Tech. Inc., 492 F. Supp. 2d 600, 605
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`(E.D. Tex. 2007).
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`
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`Here, as in Commonwealth, the patented CustomPlay technology is not limited to a minor
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`component in Amazon’s