PublishedAugust 7, 2017

CustomPlay, Annotated

Near the end of July, CustomPlay sued Apple and Amazon.  CustomPlay is owned by Max Abecassis, who also owns Nissim Corp.  (Nissim has a long history of involvement with the DVD standard and nearly as long of a history of forcing companies to license its DVD patents; this is hardly Abecassis’ first go at patent enforcement.)

CustomPlay doesn’t deal with DVDs.  Instead, its patents cover basic concepts in digital video playback.  

The asserted patents claim to cover the concept of skipping back in a video and turning on the subtitles in order to figure out what someone said, the concept of identifying who appears in a scene of a video, the concept of providing an icon indicating information about a video scene exists, and the concept of providing information about a current video scene and a previous video scene.  (The first one is asserted against Apple; the remainder against Amazon.)

So, yes, CustomPlay has essentially claimed to own the concepts of rewinding and rewatching a section of a scene with subtitles on, annotating media, the identifier for a footnote,[1. Like this one.] and displaying annotations for two pieces of material in conjunction with one another.

If These Aren’t Abstract Ideas, What Would Be?

Here’s claim 1 of the patent CustomPlay asserted against Apple:

1. A method of replaying a portion of a video comprising the steps of:

receiving, during a playing of a video, a replay request to replay a portion of a video;

storing a request position of the playing of the video responsive to the replay request;

skipping, responsive to the replay request, the video to a replay position that is responsive a preestablished replay preference;

enabling a playing of subtitles;

playing the video and the subtitles from the replay position; and

discontinuing the playing of subtitles responsive to the request position.

That’s it.  That’s the entire thing.  Decide you want to replay a section of a video, remember where you were, skip back a bit, turn on subtitles, play the section, and turn off subtitles once the section is over.

This is exactly what Bilski and Alice told us was unpatentable—claiming an abstract idea, and in this case, claiming an automated process for organizing a human activity.  In this case, the human activity of rewatching a segment with the closed captions on so you can figure out what exactly they said.

The claims in CustomPlay’s other patents suffer similar issues with respect to § 101.  For example, claim 17 of one of the patents CustomPlay asserted against Amazon reads:

17. 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.

The concept of asking someone who that actor is, the one that’s on the screen right now. That’s what the patent covers.  Again, exactly what Bilski and Alice told us was unpatentable—claiming an abstract idea, and in this case claiming it and trying to find it patentable simply by associating it with a field of technology.

The patents in this case aren’t just invalid because they’re directed to ineligible abstract ideas, though.  They’re also invalid because the ideas themselves are old.

A Brief History Lesson[2. Regarding footnotes and annotation.]

Claim 19 of another patent asserted against Amazon reads:

19. 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.

Basically, indicating that there’s supplementary information available relating to the content currently being shown.  In other words, a footnote identifier, indicating the content is annotated.  

I’d tell you who first created the concepts of annotation and footnotes, but that’s outside of my realm of knowledge.  So I asked a friend, Megan Cook, a professor who studies medieval English literature and the history of the book, if she could tell me about the history of annotation.  

Marginalia (annotations in the margins) are an old enough phenomenon she couldn’t point out a specific origin work or even a rough date.  She could say that in written works from multiple different medieval cultures, it was typical to display multiple commentaries alongside the text.

She also pointed me to Grafton’s The Footnote, which led me to Zerby’s Devil’s Details, which led me to the Bishop’s Bible.  The Bishop’s Bible, published in 1568, provides an excellent example of the use of marginalia for annotation of a work, inclusion of identifiers to link content to the annotations in the margin, and is often recognized as the first time a footnote was used.  I’d have to check, but I think that something published over 400 years before a patent was filed qualifies as prior art.

But—beyond having prior art literally dating back to 16th century London—there’s another prior art issue in the Amazon case.

You Shouldn’t Sue People Who Implemented Your Idea Before You Filed Your Patent

CustomPlay’s Amazon case claims that Amazon’s “X-Ray” feature infringes CustomPlay’s patents.  X-Ray lets you pull up a display of who’s in a scene, what music is playing in the scene, etc.

CustomPlay’s complaint describes contacting Amazon in 2014 to push CustomPlay’s “Who?” feature, which tells you who’s on screen at a given point in time.  CustomPlay filed its patents in 2011 and 2012.  The obvious implication CustomPlay’s complaint is trying to draw is that Amazon saw its idea and thought it was great—and then stole the idea from CustomPlay.

The problem, of course, is that Amazon’s X-Ray feature for movies was released waaaaaaay back in September of 2012.  And a similar feature, X-Ray for books, was released a year earlier, in September 2011.  In fact, Kindle X-Ray for books was released before any of CustomPlay’s asserted patents were filed.  (There’s also an Amazon patent that describes applying this kind of supplemental content feature to video as well as books—take a look at column 3, lines 4-8.)  So Amazon’s own Kindle X-Ray product is prior art here, as is their related patent.  

Generally speaking, you don’t want to sue someone when they themselves came up with the idea before you filed your patent.  It makes it very hard to portray them as having done something wrong, and it makes it very easy for them to question the validity of your patent.

Prior Art Searching Is Hard

The fact that I spent fifteen minutes searching for prior art and found both the Kindle feature and the related Amazon patent highlights a pair of issues at the Patent Office.  

Even when a patent (like Amazon’s) contains suggestions that make an application (like CustomPlay’s) obvious,[3. A footnote is supplemental information for text.  If your patent describes supplemental information in electronic text, and notes that the same concept can be applied to video, the natural understanding of that statement is that you can provide supplemental information for video, such as describing the names of the actors appearing on screen.] those suggestions might not be immediately apparent without reading the entirety of the prior patent.  So you don’t see a citation to the Amazon patent in the file histories.

And far too often, the Patent Office fails to consider prior art that isn’t a patent or traditional publication.  For whatever reason, whether it’s a lack of inclination or a lack of resources, products, existing software, manuals, and lecture notes simply aren’t cited as prior art.  So you don’t see a citation to Kindle X-Ray in the file history of the patents asserted against Amazon either.

Given that examiners get a limited amount of time (in some cases, as little as 15-18 hours) to search for prior art and write an office action, it’s hard for them to spend a significant amount of that time reading and considering the entirety of every patent they find and thinking about how it might be developed, or researching every product that was available before the alleged invention.  

But the difficulties in examination do mean that it becomes even more important for defendants to be able to request an enhanced review of patents—like the inter partes review created in the America Invents Act.  

Pressing Stop

The availability of inter partes review and of motions for summary judgment of invalidity under § 101 are critical tools for defendants faced with cases like these. Amazon and Apple could afford to take these cases to trial if they need to.  But smaller defendants (and there are a lot of them—Prof. Colleen Chien estimates that approximately 55% of unique patent defendants are companies with revenues under $10,000,000 per year) might not be able to justify that.

For them, it’s important to have tools that allow a challenge to the validity of an obviously invalid patent without requiring a full-scale trial, like inter partes review.  And it’s important to have tools to challenge the validity of a patent as ineligible at an early stage in the case, before significant costs have really occurred, like motions under § 101.

Without these tools, they might be stuck watching the whole case unfurl, or being forced to settle to avoid the costs of litigation.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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