Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 1 of 15
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`DURIE TANGRI LLP
`DARALYN J. DURIE (SBN 169825)
`ddurie@durietangri.com
`CLEMENT S. ROBERTS (SBN 209203)
`croberts@durietangri.com
`LAURA E. MILLER (SBN 271713)
`lmiller@durietangri.com
`217 Leidesdorff Street
`San Francisco, CA 94111
`Telephone: 415-362-6666
`Facsimile:
`415-236-6300
`
`Attorneys for Plaintiff
`YAHOO! INC.
`
`IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`Case No. 5:16-cv-00349
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`YAHOO! INC.’S COMPLAINT FOR
`DECLARATORY JUDGMENT
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`
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`DEMAND FOR JURY TRIAL
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`YAHOO! INC.,
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`v.
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`Plaintiff,
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`KUDELSKI SA, and OPENTV, INC.,
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`Defendants.
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`YAHOO! INC.’S COMPLAINT FOR DECLARATORY JUDGMENT / CASE NO. 5:16-CV-00349
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 2 of 15
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`Plaintiff Yahoo! Inc. (“Yahoo”), for its Complaint for Declaratory Judgment against Defendants
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`Kudelski SA (“Kudelski”), and OpenTV, Inc. (“OpenTV”) (each a “Defendant” and collectively
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`“Defendants”), alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for declaratory judgment under the Declaratory Judgment Act, 28 U.S.C.
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`§ 2201 et seq. and the Patent Laws of the United States, 35 U.S.C. § 1 et seq. Yahoo seeks a declaration
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`of non-infringement for each of United States Patent Nos. 7,409,437 (the “’437 Patent”), 6,233,736 (the
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`“’736 Patent”), 7,055,169 (the “’169 Patent”), 7,028,327 (the “’327 Patent”) 7,752,642 (the “’642
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`Patent”) and 6,758,754 (the “’754 Patent”). In addition, Yahoo seeks a declaration that United States
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`Patent No. 6,148,081 (the “’081 Patent”) is invalid for lacking patent-eligible subject matter. Taken
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`together the foregoing patents are referred to herein as the “Patents-in-Suit.”
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`PARTIES
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`2.
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`Yahoo is a company organized and existing under the laws of the Delaware with its
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`principal place of business at 701 First Avenue, Sunnyvale, California 94089.
`3.
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`Upon information and belief, Kudelski is a Swiss company with a principal place of
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`business at Route de Genève 22, 1033 Cheseaux-sur-Lausanne, Switzerland.
`4.
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`OpenTV is a corporation organized and existing under the laws of Delaware with its
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`principal place of business at 275 Sacramento Street, San Francisco, California 94111. Upon information
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`and belief, OpenTV is a wholly-owned subsidiary of Kudelski.
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`JURISDICTION AND VENUE
`This action arises under the Patent Laws of the United States of America, 35 U.S.C. § 1 et
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`5.
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`seq. and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. This Court has subject matter
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`jurisdiction over the action under 28 U.S.C. § 1331 and § 1338, based on the existence of an actual
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`controversy between Yahoo, on the one hand, and Defendants, on the other hand, for claims under the
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`Patent Laws. In particular, there is an active case or controversy about whether or not Yahoo infringes
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`any claims of each of the Patents-in-Suit. The existence of this controversy is demonstrated by, for
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`example, the December 22, 2015 letter (attached hereto as Exhibit A) which Yahoo received from
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`Kudelski and which purports to provide “notice of infringement” of each of the Patents-in-Suit. On
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 3 of 15
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`information and belief, each of the Patents-in-Suit are owned by Kudelski’s subsidiary OpenTV.
`6.
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`This Court has personal jurisdiction over Defendants pursuant to the laws of the State of
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`California, including California’s long-arm statute, and California Code of Civil Procedure § 410.10.
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`First, the Court has jurisdiction over OpenTV (which is, on information and belief, the direct owner of
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`each of the Patents-in-Suit) because OpenTV maintains its principal place of business in this district at
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`275 Sacramento Street, San Francisco, California 94111 and because OpenTV is registered with the
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`California Secretary of State to do business in California.
`7.
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`The Court also has personal jurisdiction over each of the Defendants because each of the
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`Defendants has purposely conducted its patent enforcement activities in this district and towards
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`residents of this District. In particular, and on information and belief, Defendants’ enforcement efforts
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`have included: (a) hiring counsel who reside and practice in this District (such as John Edwards at
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`Kirkland & Ellis who was counsel of record for OpenTV in OpenTV, Inc v. Netflix, Inc., N.D. Cal. Case
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`No. 3:14-cv-01525 and for both OpenTV and another Kudelski subsidiary in OpenTV, Inc. and Nagra
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`France SAS v. Netflix, Inc., N.D. Cal. Case No. 3:14-cv-01723 and Robert F. McCauley from Finnegan,
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`Henderson who is counsel for OpenTV and two other Kudelski subsidiaries in OpenTV, Inc.,
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`Nagravision S.A. and Nagra France S.A.S. v. Apple, Inc., N.D. Cal. Case No. 3:15-cv-02008) for the
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`express purpose of enforcing their patent rights—including rights in several of the Patents-in-Suit; (b)
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`filing lawsuits and/or causing lawsuits to be filed in this District to enforce patent rights, including rights
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`in several of the Patents-in-Suit (see e.g. OpenTV, Inc. and Nagravison SA. v. Apple Inc., N.D. Cal. Case
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`No. 3:14-cv-01622 and OpenTV, Inc., Nagravision S.A. and Nagra France S.A.S. v Apple, Inc., N.D. Cal.
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`Case No. 3:15-cv-02008); (c) prosecuting (and/or causing to be prosecuted) an action to enforce patents
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`including several of the Patents-in-Suit (namely the ’437, ’169, and ’736 Patents) against Netflix in a
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`case that was originally filed in Delaware and then transferred to this District (see OpenTV, Inc v. Netflix
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`Inc., N.D. Cal. Case No. 3:14-cv-01525) and (d) undertaking extra-judicial enforcement efforts of the
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`Patents-in-Suit against Yahoo—including through the enforcement meetings described in the letter
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`attached hereto as Exhibit A—a letter in which Kudelski demands payment from Yahoo while asserting
`that it “remains committed to enforcing its intellectual property rights.” (emphasis added). Notably, the
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`meetings described in the attached letter took place at Yahoo’s headquarters in this District, and involved
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 4 of 15
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`attempts by Kudelski to acquire patents from Yahoo.
`8.
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`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391 and 1400 because OpenTV
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`resides in the Northern District of California and a substantial portion of the events giving rise to this
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`action, including the development of the accused instrumentalities, took place here.
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`THE PATENTS-IN-SUIT
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`U.S. Patent No. 7,409,437
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`The ’437 Patent is entitled “Enhanced Video Programming System and Method for
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`A.
`9.
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`Incorporating and Displaying Retrieved Integrated Internet Information Segments.” A copy of the ’437
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`Patent is attached hereto as Exhibit B. The ’437 Patent states on its face that it was issued to Craig
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`Ullman, Jack D. Hidary, and Nova T. Spivack.
`10.
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`The application that issued as the ’437 Patent was filed on November 18, 2002, and the
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`United States Patent and Trademark Office issued the ’437 Patent on August 5, 2008.
`11.
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`Kudelski has alleged that Claim 4 of the ’437 Patent is infringed by the interactive video
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`advertising functionality employed by Yahoo’s streaming video delivery services available through
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`yahoo.com and Yahoo’s branded mobile applications available on Android or iOS devices and Yahoo’s
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`Connected TV platform.
`B.
`12.
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`U.S. Patent No. 6,233,736
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`The ’736 Patent is entitled “Media Online Service Access System and Method.” A copy
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`of the ’736 Patent is attached as Exhibit C. The ’736 Patent states on its face that it was issued to
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`Thomas R. Wolzien.
`13.
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`The application that issued as the ’736 Patent was filed on April 3, 1998, and the United
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`States Patent and Trademark Office issued the ’736 Patent on May 15, 2001.
`14.
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`Kudelski has alleged that Claims 1–3, and 7–12 of the ’736 Patent are infringed by the
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`interactive video advertising functionality employed by Yahoo’s streaming video delivery services
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`available through yahoo.com and Yahoo’s branded mobile applications available on Android or iOS
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`devices and Yahoo’s Connected TV platform.
`C.
`15.
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`U.S Patent No. 7,055,169
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`The ’169 Patent is entitled “Supporting Common Interactive Television Functionality
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 5 of 15
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`Through Presentation Engine Syntax.” A copy of the ’169 Patent is attached as Exhibit D. The ’169
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`Patent states on its face that it was issued to Alain Depulch, James Whitledge, Jean-Rene Menand,
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`Emmanuel Barbier, Kevin Hausman, Debra Hensgen, and Dongmin Su.
`16.
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`The application that issued as the ’169 Patent was filed on April 21, 2003, and the United
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`States Patent and Trademark Office issued the ’169 Patent on May 30, 2006.
`17.
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`Kudelski has alleged that Claims 1–2, and 22–23 of the ’169 Patent are infringed by the
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`adaptive streaming and resource management functionality employed by Yahoo’s Connected TV
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`platform.
`D.
`18.
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`U.S. Patent No. 7,028,327
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`The ’327 Patent is entitled “Using the Electronic Program Guide to Synchronize
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`Interactivity with Broadcast Programs.” A copy of the ’327 Patent is attached as Exhibit E. The ’327
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`Patent states on its fact that it was issued to Brian P. Dougherty and C. Leo Meier.
`19.
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`The application that issued as the ’327 Patent was filed on March 29, 2000, and the United
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`States Patent and Trademark Office issued the ’327 Patent on April 11, 2006.
`20.
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`Kudelski has alleged that Claims 13–15, 17–19, 22, 29–30, and 36 of the ’327 Patent are
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`infringed by the interactive video advertising functionality employed by Yahoo’s streaming video
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`delivery services available through yahoo.com and Yahoo’s branded mobile applications available on
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`Android or iOS devices and Yahoo’s Connected TV platform.
`E.
`21.
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`U.S. Patent No. 7,752,642
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`The ’642 Patent is entitled “Post Production Visual Alterations.” A copy of the ’642
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`Patent is attached as Exhibit F. The ’642 Patent states on its face that it was issued to Thomas Lemmons.
`22.
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`The application that issued as the ’642 Patent was filed on October 22, 2008, and the
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`United States Patent and Trademark Office issued the ’642 Patent on July 6, 2010.
`23.
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`Kudelski has alleged that Claims 1, and 8–9 of the ’642 Patent are infringed by the
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`interactive video advertising functionality employed by Yahoo’s streaming video delivery services
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`available through yahoo.com and Yahoo’s branded mobile applications available on Android or iOS
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`devices and Yahoo’s Connected TV platform.
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 6 of 15
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`F.
`24.
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`U.S. Patent No. 6,758,754
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`The ’754 Patent is entitled “System and Method for Interactive Gameplay Scheduled
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`Based on Real-Life Events.” A copy of the ’754 Patent is attached as Exhibit G. The ’754 Patent states
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`on its face that it was issued to Eric Robert Lavanchy, Anthony Frank Zito, and Richard Edward Lamb.
`25.
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`The application that issued as the ’754 Patent was filed on August 13, 1999, and the
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`United States Patent and Trademark Office issued the ’754 Patent on July 6, 2004.
`26.
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`Kudelski has alleged that Claims 1–2, 4, 6–8, 11–15, 18–19, 22–24, 27, 29, and 31 are
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`infringed by the fantasy gaming functionality employed by Yahoo’s fantasy sports gaming services
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`available through yahoo.com and Yahoo branded mobile applications available on Android or iOS
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`devices and Yahoo’s Connected TV platform.
`G.
`27.
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`U.S. Patent No. 6,148,081
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`The ’081 Patent is entitled “Security Model for Interactive Television Applications.” A
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`copy of the ’081 Patent is attached as Exhibit H. The ’081 Patent states on its face that it was issued to
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`Steven Szymanski, Jean Rene Menand, Vincent Dureau, and Suresh N. Chari.
`28.
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`The application that issued as the ’081 Patent was filed on November 20, 1998, and the
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`United States Patent and Trademark Office issued the ’081 Patent on November 14, 2000.
`29.
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`Kudelski has alleged that Claims 1 and 6 of the ’081 Patent are infringed by the security
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`model employed by the Yahoo Connected TV platform.
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`COUNT ONE
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`(Declaratory Judgment of Non-Infringement of the ’437 Patent)
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`Paragraphs 1 through 29 are incorporated herein as set forth above.
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`Upon information and belief, OpenTV is the current assignee of the ’437 Patent.
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`As set forth above, an actual and justiciable controversy exists between Yahoo and
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`30.
`31.
`32.
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`Defendants regarding infringement of Claim 4 of the ’437 Patent by the 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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`through Yahoo’s branded mobile applications available on Android or iOS devices and Yahoo’s
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`Connected TV platform.
`33.
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`The manufacture, use, offer for sale, sale, and/or importation of the interactive video
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 7 of 15
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`advertising functionality employed by Yahoo’s streaming video delivery services available through
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`yahoo.com and Yahoo’s branded mobile applications available on Android or iOS devices and Yahoo’s
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`Connected TV platform do not infringe and have not infringed, directly or indirectly, Claim 4 of the ’437
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`Patent, either literally or under the doctrine of equivalents.
`34.
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`The preamble of Claim 4 of the ’437 Patent recites “receiving a programming signal
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`containing an embedded address,” which serves as the antecedent basis for “the embedded address” and
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`“the address” in further limitations in the claim. Yahoo does not infringe Claim 4 of the ’437 patent at
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`least because it does not meet the “embedded address” limitations in that Yahoo’s video programming
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`signals do not contain anything that would qualify as an embedded address. To the contrary, in Yahoo’s
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`system anything that might qualify as an address is decoupled from the programming signal and sent to
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`the end-user from a different server than the programming signal.
`35.
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`Yahoo is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
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`and/or importation of the interactive video advertising functionality employed by Yahoo’s streaming
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`video delivery services available through yahoo.com and Yahoo’s branded mobile applications available
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`on Android or iOS devices and Yahoo’s Connected TV platform does not and will not infringe Claim 4
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`of the ’437 Patent.
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`COUNT TWO
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`(Declaratory Judgment of Non-Infringement of the ’736 Patent)
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`Paragraphs 1 through 29 are incorporated herein as set forth above.
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`Upon information and belief, OpenTV is the current assignee of the ’736 Patent.
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`As set forth above, an actual and justiciable controversy exists between Yahoo and
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`36.
`37.
`38.
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`Defendants regarding the alleged infringement of Claims 1–3 and 7–12 of the ’736 Patent by the
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`interactive video advertising functionality employed by Yahoo’s streaming video delivery services
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`available through yahoo.com and Yahoo’s branded mobile applications available on Android or iOS
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`devices and Yahoo’s Connected TV platform.
`39.
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`The manufacture, use, offer for sale, sale, and/or importation of the interactive video
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`advertising functionality employed by Yahoo’s streaming video delivery services available through
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`yahoo.com and Yahoo’s branded mobile applications available on Android or iOS devices and Yahoo’s
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 8 of 15
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`Connected TV platform has not infringed and does not infringe, directly or indirectly, Claims 1–3 and 7–
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`12 of the ’736 Patent, either literally or under the doctrine of equivalents.
`40.
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`Claims 1–3 of the ’736 Patent each recite “an address associated with an online
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`information source provided with a video program” and require that “an address has been provided with
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`said video program.” The accused interactive video advertising functionality does not infringe Claims 1–
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`3 at least because it does not provide an address with the video program. Instead, to the extent any
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`address is even associated with a video program, that address is decoupled from the video program and
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`sent to the end-user independently and from a separate server than the video program.
`41.
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`Claims 7–12 of the ’736 Patent each recite “a link provided in [said/a] [video
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`program/electronic signal].” The accused interactive video advertising functionality does not infringe
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`Claims 7–12 at least because, to the extent it provides any links, those links are not provided in the video
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`program. Instead, in Yahoo’s system, links are decoupled from video programs and sent to the end-user
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`from a separate server.
`42.
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`Yahoo is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
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`and/or importation of the interactive video advertising functionality employed by Yahoo’s streaming
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`video delivery services available through yahoo.com and Yahoo’s branded mobile applications available
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`on Android or iOS devices and Yahoo’s Connected TV platform does not and will not infringe Claims 1–
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`3 and 7–12 of the ’736 Patent.
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`COUNT THREE
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`(Declaratory Judgment of Non-Infringement of the ’169 Patent)
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`Paragraphs 1 through 29 are incorporated herein as set forth above.
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`Upon information and belief, OpenTV is the current assignee of the ’169 Patent.
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`As set forth above, an actual and justiciable controversy exists between Yahoo and
`
`43.
`44.
`45.
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`Defendants regarding infringement of Claims 1–2 and 22–23 of the ’169 Patent by the adaptive
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`streaming and resource management functionality employed by Yahoo’s Connected TV platform.
`46.
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`The manufacture, use, offer for sale, sale, and/or importation of the adaptive streaming
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`and resource management functionality employed by Yahoo’s Connected TV platform has not infringed
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`and does not infringe, directly or indirectly, Claims 1–2 and 22–23 of the ’169 Patent, either literally or
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 9 of 15
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`under the doctrine of equivalents.
`47.
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`Claims 1–2 and 22–23 of the ’169 Patent each recite “prohibit[ing] initiation/[the
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`presenting] of said presentation until said subset of resources are acquired, in response to determining the
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`one or more directives include said prerequisite directive.” Yahoo’s adaptive streaming and resource
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`management functionality does not infringe Claims 1–2 and 22–23 at least because it does not meet this
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`limitation. More specifically, the user’s bandwidth and CPU capacity are not prerequisite resources as
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`that term is used in the ’169 Patent, and (in any event) Yahoo does not prohibit the initiation of an audio,
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`video, and/or graphic presentation until specific amounts of bandwidth and CPU capacity are obtained.
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`To the contrary, in Yahoo’s system an audio, video and/or graphic presentation can begin regardless of
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`the specific amount of bandwidth and CPU capacity a user has available.
`48.
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`Yahoo is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
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`and/or importation of the adaptive streaming and resource management functionality employed by
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`Yahoo’s Connected TV platform does not and will not infringe Claims 1–2 and 22–23 the ’169 Patent.
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`COUNT FOUR
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`(Declaratory Judgment of Non-Infringement of the ’327 Patent)
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`Paragraphs 1 through 29 are incorporated herein as set forth above.
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`Upon information and belief, OpenTV is the current assignee of the ’327 Patent.
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`As set forth above, an actual and justiciable controversy exists between Yahoo and
`
`49.
`50.
`51.
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`Defendants regarding infringement of Claims 13–15, 17–19, 22, 29–30, and 36 of the ’327 Patent by the
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`interactive video advertising functionality employed by Yahoo’s streaming video delivery services
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`available through yahoo.com and Yahoo’s branded mobile applications available on Android or iOS
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`devices and Yahoo’s Connected TV platform.
`52.
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`The manufacture, use, offer for sale, sale, and/or importation of the interactive video
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`advertising functionality employed by Yahoo’s streaming video delivery services available through
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`yahoo.com and Yahoo’s branded mobile applications available on Android or iOS devices and Yahoo’s
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`Connected TV platform has not infringed and does not infringe, directly or indirectly, Claims 13–15, 17–
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`19, 22, 29–30, and 36 of the ’327 Patent, either literally or under the doctrine of equivalents.
`53.
`
`Claims 13–15, 17–19, 22, 29–30, and 36 of the ’327 Patent each recite “determining,
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 10 of 15
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`using an electronic program guide, an interactive application associated with a broadcast program.”
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`Yahoo’s interactive video advertising functionality does not infringe any of Claims 13–15, 17–19, 22,
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`29–30, and 36 at least because it does not meet this limitation. In particular, Yahoo’s interactive video
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`advertising functionality is not associated with a “broadcast program,” as that term is used in the ’327
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`Patent and does not use an electronic program guide to determine an interactive application. To the
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`contrary, Yahoo is an internet (rather than a broadcast) platform and does not use EPGs to help users
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`discover interactive applications.
`54.
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`Yahoo is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
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`and/or importation of interactive video advertising functionality employed by Yahoo’s streaming video
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`delivery services available through yahoo.com and Yahoo’s branded mobile applications available on
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`Android or iOS devices and Yahoo’s Connected TV platform does not and will not infringe Claims 13–
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`15, 17–19, 22, 29–30, and 36 of the ’327 Patent.
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`COUNT FIVE
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`(Declaratory Judgment of Non-Infringement of the ’642 Patent)
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`Paragraphs 1 through 29 are incorporated herein as set forth above.
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`Upon information and belief, OpenTV is the current assignee of the ’642 Patent.
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`As set forth above, an actual and justiciable controversy exists between Yahoo and
`
`55.
`56.
`57.
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`Defendants regarding infringement of Claims 1, and 8–9 of the ’642 Patent by the interactive video
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`advertising functionality employed by Yahoo’s streaming video delivery services available through
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`yahoo.com and Yahoo’s branded mobile applications available on Android or iOS devices and Yahoo’s
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`Connected TV platform.
`58.
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`The manufacture, use, offer for sale, sale, and/or importation of the interactive video
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`advertising functionality employed by Yahoo’s streaming video delivery services available through
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`yahoo.com and Yahoo’s branded mobile applications available on Android or iOS devices and Yahoo’s
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`Connected TV platform has not infringed and does not infringe, directly or indirectly, Claims 1, and 8–9
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`of the ’642 Patent, either literally or under the doctrine of equivalents.
`59.
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`Claims 1, and 8–9 of the ’642 Patent each recite “combining said placement and contour
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`data with a video signal for said video content to create a combined video signal” and then “transmitting
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 11 of 15
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`said combined video signal to a receiver system.” Yahoo’s interactive video advertising functionality
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`does not infringe Claims 1 and 8–9 of the ’642 Patent at least because it does not meet these limitations.
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`More specifically, to the extent placement and contour data is determined at all, it is determined by the
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`client software on the end-user’s device, and is not combined and/or transmitted with the video signal.
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`Thus, the “combining” step is simply not performed and to the extent it were performed, it would be
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`performed by someone other than Yahoo and thus no one entity would perform all of the steps of these
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`method claims.
`60.
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`Yahoo is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
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`and/or importation of the interactive video advertising functionality employed by Yahoo’s streaming
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`video delivery services available through yahoo.com and Yahoo’s branded mobile applications available
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`on Android or iOS devices and Yahoo’s Connected TV platform does not and will not infringe Claims 1
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`and 8–9 of the ’642 Patent.
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`COUNT SIX
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`(Declaratory Judgment of Non-Infringement of the ’754 Patent)
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`Paragraphs 1 through 29 are incorporated herein as set forth above.
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`Upon information and belief, OpenTV is the current assignee of the ’754 Patent.
`
`As set forth above, an actual and justiciable controversy exists between Yahoo and
`
`61.
`62.
`63.
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`Defendants regarding infringement of Claims 1–2, 4, 6–8, 11–15, 18–19, 22–24, 27, 29, and 31 of the
`
`’754 Patent by the fantasy gaming functionality employed by Yahoo’s fantasy sports gaming services
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`available through yahoo.com and Yahoo branded mobile applications available on Android or iOS
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`devices and Yahoo’s Connected TV platform.
`64.
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`The manufacture, use, offer for sale, sale, and/or importation of the fantasy gaming
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`functionality employed by Yahoo’s fantasy sports gaming services available through yahoo.com and
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`Yahoo branded mobile applications available on Android or iOS devices and Yahoo’s Connected TV
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`platform has not infringed and does not infringe, directly or indirectly, Claims 1–2, 4, 6–8, 11–15, 18–19,
`
`22–24, 27, 29, and 31 of the ’754 Patent, either literally or under the doctrine of equivalents.
`65.
`
`Claims 1–2, 4, 6, and 23–24 of the ’754 Patent each recite “identifying a plurality of
`
`players, each player associated with one of a plurality of teams based on a player profile indicating a real-
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 12 of 15
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`life participant preference, each team relating to a real-life participant in a scheduled event” or
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`“displaying an assignment of a plurality of players to a team for the one or more contests based on a
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`player profile indicating a real-life participant preference.” Yahoo’s fantasy gaming functionality does
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`not infringe Claims 1-2, 4, 6, or 23–24 at least because it does not meet these limitations. More
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`specifically, in Yahoo’s fantasy gaming functions players are not grouped onto teams based on a player
`
`profile indicating a preference or loyalty to a real-life participant/entity. Instead, in Yahoo’s system each
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`player constructs her unique team by designating a plurality of real-life athletes.
`66.
`
`Claims 7–8, 11–15, 18–19, 22, 27, 29, and 31 of the ’754 Patent each recite “placing each
`
`player on a team based on being associated with one of a plurality of entities,” “assigning the plurality of
`
`players . . . to a team for the one or more contests; wherein the means for assigning is based on a player
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`profile,” “grouping players into a plurality of teams based on an entity selected by the player,” or
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`“displaying an assignment of a plurality of players to a team for the one or more contests and a matching
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`of a plurality of teams to participate in the one or more contests wherein the matching is based on the
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`selected entity.” Yahoo’s fantasy gaming functionality does not infringe Claims 7–8, 11–15, 18–19, 22,
`
`27, 29, and 31 at least because it does not meet these limitations. More specifically, in Yahoo’s system
`
`players are not placed or assigned to teams based on an association with a real-life entity. Instead, a
`
`player constructs his or her unique team by designating a plurality of real-life athletes.
`67.
`
`Yahoo is entitled to judgment declaring that the manufacture, use, offer for sale, sale,
`
`and/or importation of the fantasy gaming functionality employed by Yahoo’s fantasy sports gaming
`
`services available through yahoo.com and Yahoo branded mobile applications available on Android or
`
`iOS devices and Yahoo’s Connected TV platform does not and will not infringe Claims 1–2, 4, 6–8, 11–
`
`15, 18–19, 22–24, 27, 29, and 31 of the ’754 Patent.
`
`COUNT SEVEN
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`(Declaratory Judgment of Invalidity of the ’081 Patent)
`
`Paragraphs 1 through 29 are incorporated herein as set forth above.
`
`Upon information and belief, OpenTV is the current assignee of the ’081 Patent.
`
`As set forth above, an actual and justiciable controversy exists between Yahoo and
`
`68.
`69.
`70.
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`Defendants as to whether Yahoo infringes any valid claim of the ’081 Patent—and in particular whether
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`Case 5:16-cv-00349 Document 1 Filed 01/21/16 Page 13 of 15
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`Claims 1 and 6 are valid.
`71.
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`Claims 1 and 6 of the ’081 Patent are invalid at least because they fail to comply with the
`
`conditions for patentability set forth in Title 35 of the United States Code, including, but not limited to,
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`35 U.S.C. § 101.
`72.
`
`Claims 1 and 6 are invalid at least because they are directed to abstract ideas and lack an
`
`inventive concept sufficient to transform the claims into a patent-eligible invention under 35 U.S.C.
`
`§ 101. More specifically, Claims 1 and 6 are directed to the abstract idea of using a credential to
`
`determine access rights. The steps of Claims 1 and 6, [a] loading an application having a credential, [b]
`
`verifying the credential, and [c] using the credential to determine whether the application is allowed to
`
`perform certain functions, do not solve a technological or mechanical problem, and can be performed
`
`without the use of a computer. And there is nothing in the claims which would act as an inventive
`
`concept sufficient to transform them into patent eligible subject matter.
`73.
`
`Yahoo is entitled to judgment declaring that Claims 1 and 6 of the ’081 Patent are invalid
`
`because they are directed to patent-ineligible subject matter under 35 U.S.C. § 101.
`
`RELIEF SOUGHT
`
`WHEREFORE, Plaintiff respectfully requests that this Court enter the following relief pursuant to
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`28 U.S.C. §§ 2201 and 2202:
`1.
`
`That a declaration be issued under 28 U.S.C. § 2201 that the manufacture, use, offer for
`
`sale, sale, and/or importation of the interactive video advertising functionality employed by Yahoo’s
`
`streaming video delivery services available through yahoo.com and Yahoo’s branded mobile applications
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`available on Android or iOS devices and Yahoo’s Connected TV platform does not and will not infringe
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`Claim 4 of the ’437 Patent;
`2.
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`That a declaration be issued under 28 U.S.C. § 2201 that the manufacture, use, offer for
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`sale, sale, and/or importation of the interactive video advertising functionality employed by Yahoo’s
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`streaming video delivery services available through yahoo.com and Yahoo’s branded mobile applications
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`available on Android or iOS devices and Yahoo’s Connected TV platform does not and wil