Complaint for Patent Infringement.
Re: technology for incorporating hyperlinking into digitial television programming.
Case: ACTV v. Disney, U.S.D.C., S.D.N.Y., Case No. 00-CIV-9622.
Filed: December 20, 2000.

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

Plaintiffs, ACTV, Inc. and HyperTV Networks, Inc., by their attorneys, for their Complaint in this action allege as follows:

1. This action arises under the Patent Act of 1952, 35 U.S.C. §§ 101 et seq.

2.  This Court has subject matter Jurisdiction over this action under 28 U.S.C. §§ 1331 and 1338(a).

3.  Venue is proper in this district under 28 U.S.C. §§ 1391(b) and 1391(c), and/or 1400(b).

4.  Plaintiff ACTV, Inc. ("ACTV") is a corporation organized and Existing under the laws of the State of Delaware. having an office and principal place of business at 225 Park Avenue South, New York. New York 10003-1604.

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5.  Plaintiff HyperTV Networks, Inc. ("HyperTV") is a wholly-owned corporate subsidiary of ACTV, organized and existing under the laws of the State of Delaware, having an office and principal place of business at 225 Park Avenue South, New York, New York 10003-1604,

6.  ACTV is a digital media company that has developed proprietary technologies that enable broadcasters, cable and satellite operators, programmers and advertisers to create and distribute individualized programming for digital television and to offer enhanced media services. These latter services, which are covered by the patents asserted in this action and which represent the business of HyperTV, enhance the television viewing experience by integrating, through the use of web site address signals, such as uniform resource locators (URLs), the delivery of the video programming and related content from the Internet.

7.  Upon information and belief, defendant The Wait Disney Co. ("Disney") is a Delaware corporation having a principal place of business at 4100 South Buena Vista Street, Burbank, California 91521.

8.  Upon information and belief, defendant ABC, Inc. ("ABC") is a New York corporation having a principal place of business at 77 West 66th Street, Room 100, New York, New York 10023.

9.  Upon information and belief, defendant ESPN, Inc. ("ESPN") is a Delaware corporation having a principal place of business at 935 Middle Street, Suite 2, Bristol, Connecticut 06010.

10.  Disney is a diversified international entertainment company, owning and operating, inter alia, defendant ABC. As of September 30, 1999, ABC had  [begin page 3] 225 primary affiliated television stations that reach 99.9% of all U.S. television households. ABC itself owns and operates at least eight television stations, including WABC-TV in New York.

11.  Disney also owns 80% of defendant ESPN which operates a cable sports programming service headquartered in Bristol, Connecticut, that reaches 77 million subscribers domestically. Disney, ABC and ESPN are hereafter referred to collectively as "Defendants."

12.  Beginning with the College Football National Championship Game in January 1999 and thereafter the preseason, regular season and post-season games during the 1999/2000 National Football League ("NFL") season, and continuing throughout the current NFL season, Defendants have offered and continue to offer and have provided and continue to provide without authorization ACTV's patented system to those of their television viewers with Internet access through a home computer, a statistically significant percentage of whom reside in this Judicial District. Defendants call the system "Enhanced TV" and describe the system as synchronizing a web site application to ESPN Sunday Night and ABC Monday Night Football telecasts. Defendants have since expanded their misappropriation of ACTV's patented system by extending their Enhanced TV system to other television programming telecasts, including ABC's telecast of Who Wants to Be a Millionaire,

13.  ACTV is the owner by assignment of and HyperTV is the licensee under United States Patent No. 5,778,181 ("'181 patent") (Exhibit A) with rights in and to the claims and causes of action involved herein. The '181 patent discloses a system [begin page 4] for integrating video programming with online information resources. Using web site address information transmitted by the video broadcaster, a web browser retrieves the identified web pages from a host server. Display of the web pages is synchronized to the display of the video content.

14.  Viewers who have used and/or continue to use the Enhanced TV service provided by Defendants have been and/or continue to be directly infringing the '181 patent, both literally and under the doctrine of equivalents, in violation of 35 U.S.C. § 271(a).

15.  Upon information and belief, Defendants knew of the pioneering efforts of ACTV and HyperTV in the field of enhanced television and appropriated those efforts when they developed the Enhanced TV service that they have provided and continue to provide to viewers of Sunday Night and Monday Night Football, Who Wants To Be a Millionaire and other television programming.

16.  Defendants were also put on notice of the '181 patent at least as early as July 14, 1999 and were supplied a copy of the patent on August 3, 1999. From that time forward, Defendants knew or should have known that their Enhanced TV services infringe the '181 patent. In callous and wanton disregard of the '181 patent, Defendants have continued, and indeed have expanded, their infringing activity.

17.  Defendants have been and still are contributorily infringing and actively inducing infringement of the '181 patent in violation of 35 U.S.C. §§ 271 (b) and (c).

18.  Defendants' infringement of the '181 patent has been willful and deliberate.

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19.  ACTV and HyperTV repeat and incorporate herein by reference the allegations contained in paragraphs 1-18 of this complaint.

20.  ACTV is the owner by assignment of and HyperTV is the licensee under United States Patent No. 5,774,664 ( "'664 patent") (Exhibit B) with rlights in and to the claims and causes of action involved herein. The '664 patent issued as a continuation-in-part of the '181 patent and like the '181 patent, discloses a system for integrating video programming with online information services. As in the '181 patent, the system uses web address signals transmitted by the programmer to retrieve, through a web browser, the identified pages from a host server. Display of the web pages is synchronized to the display of the video content.

21.  Viewers who have used and/or continue to use the Enhanced TV service provided by Defendants have been and/or continue to be directly infringing the '664 patent, both literally and under the doctrine of equivalents, in violation of 35 U.S.C. § 271(a).

22.  Defendants were put on notice of the '664 patent at least as early as July 14, 1999 and were supplied a copy of the patent on August 3, 1999. From that time forward, Defendants knew or should have known that their Enhanced TV services infringe the '664 patent. In callous and wanton disregard of the '664 patent, Defendants have continued, and indeed have expanded, their infringing activity.

23.  Defendants have been and still are contributorily infringing and actively inducing infringement of the '664 patent in violation of 35 U.S.C. §§ 271 (b) and (c).

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24.  Defendants' infringement of the '664 patent has been willful and deliberate.

25.  ACTV and HyperTV repeat and incorporate herein by reference the allegations contained in paragraphs 1-24 of this complaint.

26.  ACTV is the owner by assignment of and HyperTV is the licensee under United States Patent No. 6,018,768 ("'768 patent") (Exhibit C) with rights in and to the claims and causes of action involved herein. The '768 patent issued as a continuation-in-part of the '181 patent and like the '181 patent, discloses a system for integrating video programming with online information services. As in the '181 patent, the system uses web address signals transmitted by the programmer to retrieve, through a web browser, the identified pages from a host server.

27.  Viewers who have used and/or continue to use the Enhanced TV service provided by Defendants have been and/or continue to be directly infringing the '768 patent, both literally and under the doctrine of equivalents, in violation of 35 U.S.C. § 271(a).

28.  Defendants have been on notice of the '768 patent since at least May 15, 2000. Defendants have or should have known since that time that their Enhanced TV services infringe the '768 patent. In callous and wanton disregard of the '768 patent, Defendants have continued, and indeed have expanded, their infringing activity.

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29.  Defendants have been and still are contributorily infringing and actively inducing infringement of the '768 patent in violation of 35 U.S.C. §§ 271(b) and (c).

30.  Defendants' infringement of the '768 patent has been willful and deliberate.

WHEREFORE, ACTV and HyperTV pray for judgment and relief against Defendants, including:

(a) Adjudging the '181, '664 and '768 patents to be not invalid and to be enforceable;

(b) Adjudging that Defendants have contributorily infringed and have induced infringement of the '181, '664 and '768 patents;

(c) Permanently enjoining Defendants, their affiliates, officers, directors, employees, agents, licensees, subsidiaries, successors and assigns, and any and all persons acting in privity or in concert with any of them who receive notice of the injunction, including distributors and customers, from continuing acts of in infringement of the '181, '664 and '768 patents,

(d) Awarding ACTV and HyperTV damages for infringement, together with pre-judgment and post-judgment interest,

(e) Adjudging that Defendants are willful infringers and trebling the aforesaid damages pursuant to 35 U.S.C. § 284;

(f) Adjudging that this case is exceptional and awarding ACTV and HyperTV their reasonable attorneys' fees, pursuant to 35 U.S.C. § 285,

(g) Awarding ACTV and HyperTV their costs, expenses and disbursements incurred in connection with this action; and

(h) Awarding ACTV and HyperTV such other and further relief as this Court may deem just and proper.

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Plaintiffs ACTV and HyperTV hereby demand a trial by jury of any issue triable of right by jury.