IP Law Daily, PATENT NEWS: Google, YouTube and On2 sued for infringing digital video encoding patent, (Oct 2, 2014)
Organizations Mentioned:Google, Inc. | Max Sound Corp. | Max Sound Corporation | On2 Technologies, Inc. | Vedanti Systems Limited | Walkup, Melodia, Kelly & Schoenberger | YouTube, LLC
By Peter Reap, J.D., LL.M.
Max Sound Corporation and Vedanti Systems Limited (“VSL” and collectively, the “plaintiffs”) have filed suit in the federal district court in San Francisco, accusing Google, Inc. and two of its subsidiaries—YouTube, LLC, and On2 Technologies—of infringing VSL’s United States Patent No. 7,974,339 (the “’339 patent”) for a method of digital video encoding. Max Sound and VSL agreed that Max Sound has the right to enforce VSL’s patent rights on VSL’s behalf.
According to the complaint, in 2001, Constance Nash, one of the two named inventors of the '339 Patent, had the goal of offering to the public an Internet subscription service to deliver digitized video of musical concerts via the Internet. The then-existing video standards resulted in jittery, low-quality video and sound for large-sized video files. Together, Nash and another VSL employee conceived of the technology that ultimately became a video codec (the "VSL Codec"), and the inventions described in the '339 Patent. A “codec” is a device or computer program capable of encoding or decoding a digital data stream signal.
The VSL Codec implemented a proprietary and unique system of optimizing data transmission using methods for key frame partitioning, slicing and analyzing pixel variation of video content to significantly reduce the volume of digital video files, while minimizing any resulting loss of video quality. In 2002, the patent application that resulted in the issuance of the ‘339 patent was filed.
In early 2010, pursuant to a non-disclosure agreement, Google negotiated with VSL to discuss licensing VSL's video technology and/or the possible acquisition of VSL and the '339 Patent by Google. During the course of the negotiations, VSL provided a working VSL codec to Google for testing and analysis, and further provided copies of VSL's patents, and patent applications (including the patent application that led to the '339 Patent). By December 2010, negotiations between the parties had stalled, and the parties terminated discussions.
On information and belief, Google began to incorporate VSL's patented technology into Google’s own codecs soon after it initiated negotiations with VSL and received from VSL confidential information regarding VSL's patent portfolio. Further, the defendants' incorporation of claims of the '339 Patent into their patent applications and patents constitute tacit admissions of the defendants' infringement of the '339 Patent, the complaint alleges.
Since 2010, the defendants have been and are committing willful infringement of the ‘339 patent and the defendants' have incorporated the patented technology of the ‘339 patent into products made, used, and sold, including, but not limited to, VP8, VP9, WebM, YouTube, Google Adsense, Google Play, Google TV, Chromebook, Google Drive, Google Chromecast, Google Play-per-view, Google Glasses, Google+, Google's Simplify, Google Maps and Google Earth. In short, the defendants' infringement pervades virtually every website and product offered by Google and its defendant subsidiaries, the suit contends.
The plaintiffs request injunctive relief and damages, including treble damages, in light of the willful and deliberate nature of the infringement.
The complaint in Max Sound Corporation v. Google, Inc., Case No. 3:14-cv-04412-JCS, was filed October 1, 2014.
Attorneys: Michael A. Kelly (Walkup, Melodia, Kelly & Schoenberger) for Max Sound Corporation.
Companies: Max Sound Corporation; Google, Inc.; Vedanti Systems Limited; YouTube, LLC; On2 Technologies, Inc.
News: Patent CaliforniaNews