Should Proprietary Software Companies Be More Concerned About Open Source Or Piracy?

DVD Rental Kiosk Patented... Redbox Sued

from the sue-away dept

Wed, Oct 29th 2008 2:31pm — Mike Masnick

In 1998 I worked with a company that was trying to deliver CDs and (eventually) DVDs via rental kiosks. At the time, the idea was hardly new. In fact we've detailed the long list of failed companies who got into the kiosk business over the last few decades. But, apparently, they all had the wrong strategy. What they should have been doing is suing over patent infringement. We were just talking about Redbox, one of the few companies that's made a successful go of DVD kiosks, and its lawsuit against Universal Studios, but it appears that the company is now being sued for patent infringement as well, by a company called DVDplay. The patent itself seems to cover a disc-based kiosk that's connected to the internet. Reading through the claims, it's difficult to see how there wasn't any prior art on this stuff or that it wasn't an obvious iteration on what had come before. But, really, what does that matter once you've got a patent and you can just sue away?

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: dvd rentals, kiosks, patents
Companies: dvdplay, redbox

46 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

Anonymous Coward, 29 Oct 2008 @ 2:50pm

"Reading through the claims, it's difficult to see how there wasn't any prior art on this stuff or that it wasn't an obvious iteration on what had come before."

I take it that you are a person of ordinary skill in the art to which this invention relates, in which case you should be able to identify without difficulty specific prior art that would render the claims unpatentable.
[ link to this | view in thread ]
Michael B, 29 Oct 2008 @ 3:24pm

Um... it's not like these huge red rental kiosks were in hiding. Why would it take so long for someone to say "hey, this is our idea"? Maybe because they would have not done so if Redbox wasn't a success. But now, go after the dough!
[ link to this | view in thread ]
Momsdick = Patent Lawyer - passing LSTAT score, 29 Oct 2008 @ 3:28pm

You sir, are an IDIOT
Momsdick:

Your snarky comment on patent law illustrates just how much of a short bus simpleton you really are.

I have read many terrible blogs. Yours is the worst.

Your distain for the Constitution, your anger toward inventors and their desire to protect their inventions via patent, copyright and trademark litigation is unmatched.

You sir, need a slap in the face with a leather glove.

You sir, are all that is wrong with the blogging world.

Have you ever considered killing yourself? If not, you really, really REALLY should.
[ link to this | view in thread ]
Michael B, 29 Oct 2008 @ 3:30pm

Did a bit more digging... DVDPlay started in 2006, but...

"It’s hard to believe that the concept of Redbox started out 4 years ago, but what was initially a series of radical experiments by McDonald’s (MCD) has turned into an undeniable box office success for the company. McDonald’s may have first come up with the concept in 2002, but it wasn’t until 2003 that they tested their first unit. Initially, they had a very modest beta launch of only 6 DVD kiosks in their Las Vegas restaurants and another 11 in their Washington area stores. "

This is in a December, 2006 story found at:

http://seekingalpha.com/article/21558-a-virtual-happy-meal-mcdonald-s-redbox-a-smashing-succe ss

So it almost looks like these guys (at www.dvdplay.com) may NOT be the first. It also looks like they may be going up against Micky D's!
[ link to this | view in thread ]
Techdirt fan, 29 Oct 2008 @ 3:32pm

Mike's a good guy; he's just dumb
Give Mike a break.

He hates patents. He hates the IRS. He hates Negroes. He hates Gays. He hates women because they have breasts.

He's very opinionated. Stupid opinions, granted, but ones he is not afraid to express.

Keep up the so-so work Mike. Not everyone with a head injury is as productive as you.
[ link to this | view in thread ]
Michael B, 29 Oct 2008 @ 3:32pm

Redbox Headquarters
Oh yeah... Redbox's HQ is right down the street from McDonald's global HQ. They have DEEP pockets!
[ link to this | view in thread ]
Rose M. Welch, 29 Oct 2008 @ 3:33pm

Patents are great for innovation!
Fucking NOT!

I am pissed. I rent RedBox every time I go visit my family in OKC and I was eagerly awaiting it's arrival here in Lawton.

Now it may never happen.

Here's hoping RedBox has good cheap attorneys.
[ link to this | view in thread ]
Rose M. Welch, 29 Oct 2008 @ 3:34pm

Re: You sir, are an IDIOT
You are such a cute troll!

Remember, everyone... Don't feed the trolls.
[ link to this | view in thread ]
Michael B, 29 Oct 2008 @ 3:40pm

Re: Patents are great for innovation!
Read my comments above. Evidently, the Redbox concept was thought of by Mcdonald's back in 2002, so I wonder if DVDPlay has a legal leg to stand on. Besides, Mickey D's has a LOT of lawyers!
[ link to this | view in thread ]
some old guy, 29 Oct 2008 @ 3:44pm

DVDPlay?
I remember reading about DVDPlay recently... isn't that the company that went tits up and sold off all its assets (the kiosks themselves) to redbox?

Redbox used DVDplay's kiosks in its denver test market, determined the business model a success, and promptly had new, better suited kiosks made. The dvdplay kiosks were all phased out once redbox had the improved models, but still.
[ link to this | view in thread ]
Americans 4 Justice, 29 Oct 2008 @ 4:29pm

Communist Ideology + Masnick writing skills = Rose M. Welch
Ms. Welsh:

I just looked you up. You are a Maoist with bad skin and an eating disorder.

I dare you to say otherwise.

I double dare you.

Respectfully Yours:

John Q. Public
[ link to this | view in thread ]
Rick, 29 Oct 2008 @ 4:50pm

RedBox hads been around awhile...
I remember seeing them in Bakersfield, CA McDonald's for awhile, before I moved away in 2002.
[ link to this | view in thread ]
Anonymous Coward, 29 Oct 2008 @ 6:37pm

Re:
When an ordinary person without a background in the particular field finds an idea to be obvious you can rest assured that the experts are even more aware then they are.
[ link to this | view in thread ]
Anonymous Coward, 29 Oct 2008 @ 6:39pm

Re: Mike's a good guy; he's just dumb
Wow looks like this info has some company trolls working overtime!
[ link to this | view in thread ]
Anonymous Coward, 29 Oct 2008 @ 6:48pm

Wow, some folks here tonight need to up their meds.
Seriously, get a grip or you are going to blow out an artery.
[ link to this | view in thread ]
Lonnie E. Holder, 29 Oct 2008 @ 7:12pm

Does a Redbox Use...?
Does Redbox require an e-mail address?
[ link to this | view in thread ]
Michael B, 29 Oct 2008 @ 7:20pm

Re: Does a Redbox Use...?
Only if you pre-reserve a movie online... they use it to send you a receipt and weekly notices of new releases.
[ link to this | view in thread ]
Lonnie E. Holder, 29 Oct 2008 @ 7:22pm

Re: Re: Does a Redbox Use...?
Then all Redbox has to do is eliminate the e-mailing of the receipt and they will no longer infringe.
[ link to this | view in thread ]
angry dude, 29 Oct 2008 @ 7:26pm

Hey, Mikey is honest dude on payroll
Everybody and his dog knows that Mikey gets paychecks from the Coalition for Patent "Fairness" (aka Patent Piracy coalition) members: a few of the largest multinational corporations

Keep up good work, Mikey...
[ link to this | view in thread ]
Anonymous Coward, 29 Oct 2008 @ 8:34pm

Re: Re: Re: Does a Redbox Use...?
Do you mean to say that by using a device/method that includes fewer elements/steps it is possible to avoid infringement and thereby continue being innovative with what would thusly be a noninfringing product/method? Surely it cannot be that easy since it is a well known fact patents lock up ideas and shut others, for all intents and purposes, out of a market. As a much maligned "monopoly" it does appear in some instances to be a somewhat toothless tiger. Obviously the standards for both file wrappel estoppel and doctrine of equivalents need to be unshackled if we are to continue with what seems to pass as "conventional wisdom".
[ link to this | view in thread ]
Michael B, 29 Oct 2008 @ 8:56pm

Re: Re: Re: Does a Redbox Use...?
Probably not as simple as that... you know how lawyers are! Besides, I think many people LIKE getting a receipt, and the kiosks have no printing mechanism in them.
[ link to this | view in thread ]
Mike (profile), 29 Oct 2008 @ 9:34pm

Re: Hey, Mikey is honest dude on payroll
Everybody and his dog knows that Mikey gets paychecks from the Coalition for Patent "Fairness" (aka Patent Piracy coalition) members: a few of the largest multinational corporations

If so, then everyone is wrong... or somebody is stealing my checks. We have never received a check from that group, and, as we have pointed out to you numerous times are quite critical of their view on patents as well.

But it's not like facts have ever gotten in the way of you expressing an opinion.
[ link to this | view in thread ]
Killer_Tofu (profile), 30 Oct 2008 @ 6:08am

Them der trolls be out
I am shocked at how many trolls this thread attracted.
Like somebody posted troll paper (fly paper equivalent) on this article.

I can almost say that I am surprised you even respond to angry dude anymore Mike. It is like feeding a troll.

@Techdirt Fan
You are quite obviously not a fan. Mike seems to be quite an economist to me. Just from reading many a post over the past couple years, here and there you will see him mention the places he has been. You can even look up at the universities around the world to verify that he was a guest speaker there to speak of one topic or another. If all of his opinions sucked, I do not think he would be getting all of those invites to speak at those places. And I do not think Mike hates patents really, if you read all posts concerning patents, he dislikes bad patents, which there are a great deal many of. Patents do not have to be bad, but most of them are these days.
[ link to this | view in thread ]
CastorTroy-Libertarian, Lover, General Annoyance f, 30 Oct 2008 @ 6:20am

Re: Re: Hey, Mikey is honest dude on payroll
GAME SET MATCH, FATALITY :0
[ link to this | view in thread ]
angry dude, 30 Oct 2008 @ 6:33am

Re: Them der trolls be out
"I can almost say that I am surprised you even respond to angry dude anymore Mike. It is like feeding a troll."

Right, dude

I am a patent troll
you, on the other hand, are just a little techdirt lemming punk taking Mikey's patent-bashing BS for serious...
But unlike Mikey you are not geting any paychecks
[ link to this | view in thread ]
Lonnie E. Holder, 30 Oct 2008 @ 6:51am

Re: Re: Re: Re: Does a Redbox Use...?
Actually, it is as simple as that. In order to infringe, a device must meet every limitation of a claim (or an equivalent). Each of the independent claims require that a receipt be mailed to an e-mail address.

I admit that I focused on that one feature, but the claims are actually kind of complicated. I suspect there are probably other options for avoiding infringement. An astute engineer's advice along with a little attorney time would surely help.

Perhaps there is another way around the limitation (legal disclaimer - I am not an attorney and I am not providing legal advice). I wonder whether having the receipt stored on Redbox's web site would avoid infringement? Without reading the patent's specification in detail, it seems like it would have a good change at avoiding infringement. You could download the receipt at your convenience (if you want it) rather than having it sent to your e-mail.
[ link to this | view in thread ]
Lonnie E. Holder, 30 Oct 2008 @ 6:52am

Re: Re: Re: Re: Does a Redbox Use...?
The answer to your sarcastic question (which made me smile), is yes.
[ link to this | view in thread ]
Anonymous Coward, 30 Oct 2008 @ 7:02am

Re: Re: Re: Re: Re: Does a Redbox Use...?
I am glad it did because that was my intent, as well as to try and highlight for those who might believe otherwise that patents are actually quite limited in scope. Of course, to understand this latter point one must also understand many of the limitations that attach to claims, and particularly the doctrines of file wrapper estoppel and equivalents.
[ link to this | view in thread ]
Troy A. Wilson Sr. (profile), 30 Oct 2008 @ 7:15am

Re: Re: Them der trolls be out
A few of you get a bit too worked up. Better up the daily meds. Mike is just expressing his opinion as he sees things. If you don't like Mike or his army of 'Techdirt Lemming Punks' maybe you should find another news blog to read.
[ link to this | view in thread ]
Michael B, 30 Oct 2008 @ 7:47am

Re: Re: Re: Re: Re: Does a Redbox Use...?
Well, I highly doubt if, based on the number of machines out there, that each has a dedicated connection to the 'Net... I have no clue about the technical specs of the Redbox kiosks,but, like many standalone ATMs (i.e. those owned by non-bank entities) they simply dial in. That being said, the emails come from Redbox, not the kiosk, so I doubt that you can say that sending an email from a corporation is patentable (the technologies behind it may be though).

It will be interesting to see how this case proceeds, as well as Redbox's suit against Universal Studios Home Entertainment. Funny how this all seems to have coalesced at one time, as if it's the "perfect storm"... all of a sudden, Redbox is bullied by Universal into signing a revenue sharing agreement, DVDPlay sues Redbox... it seems almost contrived! But, like Oliver Stone, I am a dyed in the wool conspiracy theorest!
[ link to this | view in thread ]
Michael B, 30 Oct 2008 @ 7:54am

Re: Re: Re: Re: Re: Re: Does a Redbox Use...?
Patents are quite broad in scope, but if DVDPlay is making a case that every DVD rental kiosk ever developed in perpetuity (I had to throw in that pseudo-legal term) infringes on its patents is nonsense. I still believe that, in a lot of cases (at least historically) companies sue on infringement grounds simply to try to recover their losses from a failed business model... in this case, has DVDPlay failed to successfully market its product and, therefore, has decided to go after the company that DID achieve success? I don't knoew that answer, but it's certainly a possibility.

I would also tend to think that they would fail in their attempt if they are simply saying that the mere "concept" of a standalone DVD rental kiosk infringes on the patent. If a clear majority of the technology used in Redbox is a duplicate (or a derivative) of DVDPlay's work then, yes, it should be deemed as an infringement. However, judging by the history I've read, it's pretty clear that the concept of the standalone DVD rental device goes back to 2002 when McDonald's tried it in, if I remember the story correctly, Washington state.
[ link to this | view in thread ]
Michael B, 30 Oct 2008 @ 7:58am

Re: Re: Re: Re: Re: Does a Redbox Use...?
Oops... to clarify... I meant IF they work like many standalone ATMs... I would think that, since you reserve an online rental from ONE particular Redbox kiosk, all their computers would have to do is dial into the kiosk you are going to and mark your DVD as reserved; then, when you return it to any Redbox kiosk, the kiosk "phones home" periodically to upload a list of returned DVDs. Sounds simple.
[ link to this | view in thread ]
Killer_Tofu (profile), 30 Oct 2008 @ 7:59am

Re: Re: Re: Re: Re: Re: Does a Redbox Use...?
Seeing a lot of what the big studios do, and how much they hate fans and competition, I would be quite apt to believe it is not so much a theory as it is reality.

They would cut their own mother's throats for a dollar no doubt. This is in no way above them to try to pull something like this.
[ link to this | view in thread ]
DanC, 30 Oct 2008 @ 8:00am

Re: Re: Re: Re: Re: Does a Redbox Use...?
Actually, it is as simple as that.

It depends on how the patent is written. In this case, since they included the receipt in the primary claim, it might be possible to to circumvent an infringement claim by not emailing a receipt.

However, if they split up the claim:

Claim 1: DVD Rental Kiosk
Claim 2: System of claim 1 where receipt is emailed to the customer

Then bypassing the second claim by not sending a receipt wouldn't be enough to avoid infringement. But since this patent is basically nothing more than adding the internet to a pre-existing product, they pretty much had to word the patent that way in order to present something "novel".
[ link to this | view in thread ]
Anonymous Coward, 30 Oct 2008 @ 8:28am

Re: Re: Re: Re: Re: Re: Does a Redbox Use...?
The general point Mr. Holder made, and with which I must agree, is that infringement of a patent is measured against each of the patent's claims. Bear in mind that most limitations contained in such claim appear precisely because of the existense of prior art and the need to distinguish the claim over the prior art...whether it be a single piece of prior art or the collective teachings of several such pieces.

The length of the first claim, coupled with its recitation of numerous limitations, strongly suggests that the prior art was quite extensive, and that allowance of the claims required the inclusion of its numerous limitations.

Each term in a claim being important in defining what is actually protected under a patent, except in rare instances the elimination of even just one recited limitation means that a somewhat similar device is non-infringing, as Mr. Holden properly notes.

Of course, during the first two years after a patent issues a patentee is afforded the opportunity to file for what is known as a broadened reissue in which limitations recited in a claim that are not needed to describe patentable subject matter can be removed. Given, however, the length and detail of the claims, together with its long pendency (the original application(s) were filed in 1999 as provisional applications), it seems quite doubtful that a broadened reissue is even a realistic possibility.
[ link to this | view in thread ]
Anonymous Coward, 30 Oct 2008 @ 11:32am

Re: Re: Them der trolls be out
Seriously, if you don't like the opinion offered, then DON'T READ IT. For Christ sake, MORON.
[ link to this | view in thread ]
passer_by, 3 Nov 2008 @ 10:08am

Re: Them der trolls be out
You're right.

I came upon this site quite by accident, reading about this DVDplay/Redbox suit, which I believe is bogus anyway - those kiosks are like ATMs, only giving disks instead of money. However, the patent goes to the person who files it first. If, indeed, McD's came up with the idea (which I don't think they did - I think they were approached because they have so many stores that it would be a ready made market), they still didn't patent it - DVDplay did. It took the government 8 years to grant the patent, which is about par for the course, and what? 2 days to file a suit? (I think they had one ready on the computer just waiting for a patent number and date.)

Anyway, this thread has possibly the highest amount of trolls I've seen in a long time, with the exception, of course of discussions involving Windows/Linux preferences.
[ link to this | view in thread ]
Lonnie E. Holder, 4 Nov 2008 @ 5:48am

Re: Re: Them der trolls be out
passer_by:

I came upon this site quite by accident...

Anyway, this thread has possibly the highest amount of trolls I've seen in a long time, with the exception, of course of discussions involving Windows/Linux preferences.

Let me see. You came upon this site by accident, and yet this thread has the highest amount of trolls you have seen in a long time. Now, in order for this comment to have relevancy to the others on this site, you need to be comparing with other threads on this site - cross site comparisons have little value. Ergo, you must be familiar with this site. Either that, or you are just plain confused - or wrong.

However, the patent goes to the person who files it first.

If you are a U.S. citizen, please tell me you are NOT a registered practitioner. If you are, please tell me your number so I may report you to the USPTO for incompetence. If two patent applications are filed within a certain period of time by two different inventors, in the U.S. the patent goes to the person who invented first. The U.S. is the only country (I believe) with a first-to-invent system. In all other countries the first-to-file wins the day.

It took the government 8 years to grant the patent, which is about par for the course, and what? 2 days to file a suit?

What in your vast experience makes it "par for the course"? Eight years is well over the average pendency time for a patent application in the U.S.

Anyway, this thread has possibly the highest amount of trolls I've seen in a long time, with the exception, of course of discussions involving Windows/Linux preferences.

According to Wikipedia, the definition of an internet troll is "someone who posts controversial, inflammatory, irrelevant or off-topic messages in an online community...with the intention of provoking other users into an emotional response or to generally disrupt normal on-topic discussion.

You came in, insulted people who had posted on this topic, made inaccurate and irrelevant statements, and at least one inflammatory statement. If you are looking for trolls, look in the mirror first.
[ link to this | view in thread ]
Rose M. Welch, 3 Apr 2009 @ 10:19am

Re: Communist Ideology + Masnick writing skills = Rose M. Welch
Roflmao, you must be talking about someone else. My last name is not Welsh, I don't have an eating disorder, and I'm more interested in Tao than Mao, and I'm actually not even a Ms.

However, I'm pretty stoked that you think I can write like Mike Masnick. I always do admire a logical argument sans mud-slinging plus construction and Masnick seems to have the corner on that. Thanks!
[ link to this | view in thread ]
Rose M. Welch, 3 Apr 2009 @ 10:21am

Re: Patents are great for innovation!
An update... (I saw this after Google searching myself. So shoot me.)

RedBox has come to Lawton, at Wal-Mart, McDonald's and Walgreens, making it even more awesome than it was before and we use it alot and love it.
[ link to this | view in thread ]
Justin, 3 Aug 2009 @ 7:20pm

Patents
Redbox did base its kiosk and functionality off the DVDPlay kiosks. Every stand alone kiosk isn't covered in the patent but the ones that are connected to a central server by the internet (allowing them to be returned at multiple sites across the country). DVDPlay has a great legal argument because they can always say that because they used the kiosks they based their machines off them.
[ link to this | view in thread ]
Anonymous Coward, 3 Oct 2009 @ 10:37am

Re: You sir, are an IDIOT
did mr mcdanld invent the sandwich to
[ link to this | view in thread ]
Mikes, 21 Oct 2009 @ 12:01pm

Cant be long now before online dvd rental is completely phazed out due to cheap $1 Redbox rentals and ofcourse the impending broadband tv movie streams.
[ link to this | view in thread ]
vendonet super heroes, 23 Jun 2013 @ 4:54pm

VendoNet's patents
http://www.scribd.com/doc/140672810/VendoNet-v-Redbox-Automated-Retail
[ link to this | view in thread ]
Jonathon J. Tupper, 16 Apr 2016 @ 1:04pm

Re:
actually I was the person who originally marketed the idea of the kiosk(technically my idea was a vending machine) to my mother, who had then found someone to buy my idea. That was in 1997/1998ish and I was 9/10 years old. My mother was preggers and my sister was asking questions about motherhood.("red"box because of the time of the month) my parents asked me if I thought she was ready for parenthood and I told her no because she did not have the money to pay for a child. Then the topic of how much I thought that was came up and at that point I was annoyed that I was subjected to the question, so I gave a ballpark number to cover all expenses until the child would be an adult, saying "1,000,000 dollars". Later that evening it was being discussed and the though of how would you even make that kind of money came into question to which we passed around ideas. I woke up from a dream in the middle of the night with a brilliant idea and scribbled out a picture of a vending machine that would dispense video games and dvd movies. in the morning I asked my mom to find someone who I could sell my idea to because I knew it would be a hit. (plus I wanted to make my own video games and have a place for people to pick them up)my mom initially said she would not do it and I pressed her to find someone. She said she did not know anyone and I thought of a guy that my father, who was living in California, use to work for that owned a bar and limos and a mansion. The only rich guy I knew. she still said no but I kept asking and it only took a day to convince her to poke around. anyway long story less long, I answered the door to personal security one day who were carrying a suitcase of cash to buy my idea. and my parents dealt with the sell. They never gave me credit(still do not) will not admit that this story ever took place and used my money for my step father to start a construction company.
[ link to this | view in thread ]
Jonathon J Tupper (profile), 22 Dec 2017 @ 7:51am

Re: Re: Re: Re: Re: Re: Re: Does a Redbox Use...?
the concept actually goes back to 1997. the year DVD's were released in the market. And McD was not the company to first copyright the idea. In other words credit is due elsewhere.
[ link to this | view in thread ]