UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

RICH MEDIA CLUB LLC, 

Plaintiff,

vs.

DMG MEDIA LIMITED,

Defendant.

Case No. 2:23-cv-388-JRG

Jury Trial Demand

SECOND AMENDED COMPLAINT

This is an action for patent infringement arising under the patent laws of the United States, 

Title 35 of the United States Code, against Defendant DMG Media Limited (“DMG”) that relates 

to three U.S. patents owned by Rich Media Club, LLC (“RMC”): 11,443,329; and 11,741,482 

(collectively, the “Patents-in-Suit”).

The Parties

1. Plaintiff Rich Media Club LLC (“RMC”) is a company organized under the laws 

of the State of Florida with a principal place of business in Salt Lake City, Utah.

2. Defendant DMG Media Limited (“DMG”) is a private limited company organized 

under the laws of the country of England with a principal place of business at Northcliffe House, 

2 Derry Street, London, W8 5TT.

Jurisdiction and Venue

3. This is a civil action for patent infringement arising under the Patent Laws of the 

United States, 35 U.S.C. § 1, et seq., and more particularly 35 U.S.C. § 271.

4. This Court has jurisdiction over the subject matter of the patent infringement action 

under 28 U.S.C. §§ 1331 and 1338(a).

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5. DMG is subject to this Court’s general personal jurisdiction pursuant to due process 

and/or the Texas Long Arm Statute, Tex. Civ. Prac. & Rem. Code § 17.042, due at least to its 

substantial business conducted in this District, including: (i) having solicited business in the State 

of Texas, transacted business within the State of Texas and attempted to derive financial benefit 

from residents of the State of Texas in this District, including benefits directly related to the instant 

patent infringement causes of action set forth herein; (ii) having placed its products and services 

into the stream of commerce throughout the United States and having been actively engaged in 

transacting business in Texas and in this District, and (iii) having committed the complained of 

tortious acts in Texas and in this District. DMG, directly and/or through subsidiaries and agents 

(including distributors, retailers, and others), makes, imports, ships, distributes, offers for sale, 

sells, uses, and advertises (including offering products and services through its website, 

dailymail.co.uk (also known as MailOnline or dailymail.com) its products and/or services in the 

United States, the State of Texas, and the Eastern District of Texas. DMG, directly and/or through 

its subsidiaries and agents (including distributors, retailers, and others), has purposefully and 

voluntarily placed one or more of its infringing products and/or services, as described below, into 

the stream of commerce with the expectation that they will be used by consumers in the Eastern 

District of Texas. These infringing products and/or services have been and continue to be used by 

consumers in the Eastern District of Texas. DMG has committed acts of patent infringement within 

the State of Texas and, more particularly, within the Eastern District of Texas. 

6. Venue is proper as to Defendant DMG, which is organized under the laws of 

England. 28 U.S.C. § 1391(c)(3) provides that “a defendant not resident in the United States may 

be sued in any judicial district.”

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Additional Facts Relating to Jurisdiction

7. DMG operates a newspaper/news site brand, the “Daily Mail,” that is made 

available to anyone with a web browser, including users in the State of Texas and this District,

through the website at the url: www.dailymail.co.uk (the URL www.dailymail.com redirects to the 

same .co.uk domain).

8. DMG’s product – the website itself – is the product accused of infringement in this 

complaint.

9. According to one report, The Daily Mail website ranks eleventh among Englishlanguage news sites in the United States based on the number of monthly users (114.9 million in 

September 2023). Exhibit I. Statista Report. This is substantially higher than other well-known 

news sites with a national reach that includes the State of Texas and this District such as the 

Associated Press (apnews.com; 79.6 million visits), Forbes (forbes.com; 72.6 million users), and 

The Wall Street Journal (wsj.com; 65.1 million visits). 

10. DMG’s parent company, the DMG Trust (“DMGT”), reported in its 2023 annual 

report revenue “based on the geographic location of customers” in three geographic regions. For 

the fiscal year ended September 30, 2023, DMGT reported 160 million GPB in revenue from 

customers based in North America. For the fiscal year ended September 30, 2022, DMGT reported 

209 million GPB in revenue from customers based in North America. Exhibit A, 2023 Annual 

Report, page 72. 

11. On information and belief, and particularly because the website is written in 

English, a significant portion of the revenue reported as from “North America” was generated from 

users based in the United States, including revenue from users based in the State of Texas and in 

this District. 

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12. DMG solicits subscriptions to the digital version of its paper via at least the 

following website: https://www.mailsubscriptions.co.uk/. Such solicitations are directed to 

individuals throughout the United States, including people who reside in the State of Texas and 

this District.

13. DMG reports a growing subscriber base in the United States: “The financial 

performance of the Property Information business is expected to continue to be affected by UK 

property transaction volumes, notably in the residential market, as well as by subscription revenues 

in the US, where the revenue outlook for FY 2024 is more encouraging.” Exhibit A, page 4.

14. DMG’s specifically targets residents of the State of Texas at least because the

website includes a webpage dedicated to news from Texas: 

https://www.dailymail.co.uk/news/texas/index.html, which includes “Trending Texas News.”

15. DMG operates an on-line store that it makes available to anyone with a web 

browser through the website at https://shop.dailymail.co.uk/.

16. In 2014, the Guardian reported that “Almost 70% of [DMG’s] monthly web traffic 

comes from outside the UK, with most of that from the potentially lucrative US market” and that 

DMG “paid potentially as much as £1m-plus in bid to boost international traffic, particularly in 

the US.” DMG did this by purchasing the “dailymail.com” domain name, which had been owned 

by South Carolina-based Charleston Daily Mail. See 

https://www.theguardian.com/media/2014/jan/27/mail-online-com-domain-name.

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Background Facts

Online Advertising and RMC’s Technology

17. RMC solves technical issues with online advertising with innovative, patented 

technology. By understanding the relationship between the size of content and the size of ads 

placed alongside the content, RMC’s technology can, among other things: (1) assist in loading ads 

just before a user is expected to scroll to the content; (2) confirm that an ad is actually placed with 

the content regardless of whether it becomes viewable (and for how long); (3) confirm that an ad 

actually became viewable (and for how long); and (4) allow for the “first print” of ads to be 

replaced with a “second print” different ad based on various criteria, such as how long the first 

print ad had been placed, was viewable, or both.

18. On May 17, 2023, RMC sent a notice of patent infringement letter to DMG

regarding its infringement of U.S. Patent Nos. 11,443,329, and allowed U.S. Patent App. No. 

17/961,952 (now issued U.S. Patent No. 11,741,482).

1 The letter included detailed claim charts 

for each infringed claim, incorporated herein and attached as Exhibits B-D. RMC and DMG 

continued to communicate via email and by phone but failed to reach an agreement on licensing 

terms.

19. U.S. Patent No. 11,443,329 was duly issued to RMC on September 13, 2022. Patent 

No. 11,741,482 was duly issued to RMC on August 29, 2023.

20. As explained in the attached opinion (Exhibit E), which is incorporated by 

reference, the patents are subject matter eligible. See, e.g., Rich Media Club v. Duration Media, 

opinion, Case No. 2:22-cv-02086 in the United States District Court of Arizona.

1 Exhibit D is the claim chart provided to Defendant on May 17, 2023, before the issue date of the 

’482 Patent. Allowed claims 2, 4, 5, and 7 issued as identical claims 1, 3, 4, and 6.

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21. Electronic advertising that was never actually displayed or seen by consumers was 

an unresolved technical problem as of the time of the patented inventions.

22. The asserted patents’ claims address the problems with Internet advertising at the 

time that certain advertisements were never displayed on the screen to the consumer. The RMC 

claims disclose inventive solutions for this particular Internet-centric problem.

23. The claims address these technical challenges. These challenges are particular to 

advertising on the internet and other electronic networks. The claims do not resolve these problems 

by reciting an abstract idea or through routine, well-understood, or conventional steps or 

components. At the time of the invention, the individual elements in the claim, and the claimed 

combination, were not well-understood, routine, or conventional activity.

24. The claims do not recite the performance of some business practice known from 

the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed 

solution is necessarily rooted in computer technology in order to overcome a problem specifically 

arising in the realm of computer networks. Confirming that it is rooted in technology, and that it 

does not recite only conventional computer technology, the ’329 patent specification discloses

over ten pages of sample computer code, including at columns 24-35, 42-49, and 65-68.

25. The claims do not broadly and generically claim “use of the Internet” to perform 

an abstract business practice (with insignificant added activity). The claims at issue here specify 

how interactions with the Internet are manipulated to yield a desired result—a result different from 

the conventional and a result that overrides the routine and conventional sequence of events 

ordinarily triggered. The invention stops the computer network from operating in its normal, 

expected manner by reciting an invention that is different from the routine or conventional use of 

the Internet.

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26. The claims of the asserted patents do not claim any basic tool of scientific and 

technological work or hinder the use of any idea in all scientific fields. 

27. Multiple patents related to the ’329 and ’482 patents have traversed rejections under 

§ 101. For example, the PTAB reversed a rejection under § 101 of the ’329 patent’s grandparent 

Application No. 11/803,779, now U.S. Patent No. 10,380,602. That decision is Ex Parte Brad 

Krassner, dated December 18, 2018 and is attached hereto at Exhibit F. The PTAB found those 

claims, directed to presenting electronic advertisements on webpages, to be patentable.

28. In its decision, the PTAB relied on DDR Holdings, LLC v. Hotels.com, L.P., 773 

F.3d 1245 (Fed. Cir. 2014):

Accordingly, as in DDR Holdings, the claims recite “a solution to this networkcentric challenge,” e.g., the efficient, timely, and cost effective application of 

advertisements to webpages, for which there was no pre-computer or pre-Internet 

analog.

Exhibit F, at 12.

29. During prosecution of another patent related to the ’329 and ’482 patents, U.S. 

Application No. 11/643,245, now Patent No. 10,380,597, the examiner relied on this PTAB 

decision in the Notice of Allowance, explaining that “per the reasoning explained in the Patent 

Board Decision issued on December 18, 2018, the previous 101 rejection, 103 rejection, and 

examiner arguments have been withdrawn and the claims are allowable.” Exhibit G, at p. 6.

DMG’s pre-suit knowledge of the patents, refusal to accept service, and motion to dismiss

30. On May 17, 2023, RMC sent DMG a letter putting DMG on notice that it infringed 

each of the patents in suit.

31. The letter included the claim charts now attached as Exhibits B, C, and D to this 

First Amended Complaint.

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32. DMG was in possession of the claim charts providing an element-by-element 

analysis of infringement over three months before this suit was filed.

33. On June 28, 2023, counsel for RMC spoke with a representative from DMG. 

34. On August 25, 2023, after multiple unanswered follow-up emails to DMG, lawyers 

with the Fenwick firm indicated that they represented DMG in the matter.

35. On August 29, 2023 counsel for RMC sent counsel for DMG the same claim charts 

that had been sent to DMG directly on May 17, 2023 and filed the Complaint in this case.

36. Counsel for DMG declined to accept informal service of the complaint.

37. RMC served the complaint on DMG at its offices in London pursuant to the Hague 

Convention.

38. Despite having the complaint since August 30, 2023, and adding months of delay 

due to service through the Hague Convention, on December 5, 2023, counsel for DMG requested 

an additional 30-day extension to answer or otherwise plead, bringing the total time counsel for 

DMG had possession of both the original complaint and the claim charts to 97 days and making 

DMG’s deadline to answer January 11, 2024.

39. Counsel for DMG first raised a concern about the complaint not including the claim 

charts on January 9, 2024, two days before DMG’s responsive pleading was due, and demanding 

a response by noon the next day. Counsel for DMG had possession of both the original complaint 

and the claim charts for 132 days and DMG had been in possession of the claim charts for nearly 

eight months.

40. Adding the claim charts to the complaint provides no additional information to 

DMG or its counsel.

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41. DMG’s refusal to accept service, 30-day extension, and motion to dismiss were 

actions taken to delay the resolution of this matter.

Count I: Infringement of U.S. Patent No. 11,443,329

42. RMC reasserts and realleges the previous paragraphs of this Complaint as though 

set forth fully here.

43. DMG directly infringes at least claims 1-3 and 5 of the ’329 Patent by operating its

website at dailymail.co.uk, as further detailed in Exhibit B (incorporated by reference). DMG

performs each and every limitation of the claimed methods:

1. A method comprising:

(a) determining whether a predefined area of an ad content display page that 

is used to display an advertisement is in view within a visible area of a 

browser window of a browser configured to be operated by a remote 

computing device, wherein the predefined area is a portion of the ad content 

display page, and wherein the ad content display page includes (i) the 

predefined area configured to display advertisement content, the predefined 

area being a portion of the ad content display page, and (ii) page content 

displayed in other portions of the ad content display page, the page content 

being separate from the advertisement content; and

(b) in response to a determination that the predefined area that is used to 

display the advertisement has been in view within the visible area of the 

browser window for a predefined period of time, causing a communication 

to be sent to one or more dispatcher servers, wherein the one or more 

dispatcher servers are configured to:

(i) receive the communication;

(ii) cause a replacement advertisement to be selected for display on 

the ad content display page; and

(iii) cause the replacement advertisement to be served to the remote 

computing device;

wherein the browser is further configured to render the replacement 

advertisement in the predefined area.

2. The method of claim 1 wherein the replacement advertisement is selected 

at least partially as a result of a replacement auction.

3. The method of claim 2 wherein the replacement auction is conducted in 

real time between the time the second communication is sent from the 

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remote computing device and the time that the replacement advertisement 

is selected.

5. The method of claim 1 wherein the predefined area of the ad content 

display page currently displays an advertisement, and wherein the 

replacement advertisement replaces the currently displayed advertisement.

44. DMG performs the method claimed in claim 1 via its website, dailymail.co.uk (also 

known as MailOnline and dailymail.com).

45. DMG’s website comprises ad content display pages that are used to display 

advertisements. DMG determines whether a predefined ad space of its website is in view within a 

visible area of a browser window. The predefined ad space is a portion of the website. The 

advertisement is in view on the webpage.

46. DMG’s website is viewable on browsers configured to be operated by remote 

computing devices (e.g., laptops, smartphones, and tablets).

47. DMG’s website includes the predefined ad space configured to display 

advertisement content and separate page content (e.g., news headlines and images) displayed in 

other portions of the website.

48. DMG determines that the predefined ad space has been in view in the browser 

window for a predefined period of time (e.g., 15 seconds). In response to this determination, DMG

causes a communication (e.g., an ad request) to be sent to one or more dispatcher servers. The 

dispatcher servers are configured to receive the communication, cause a replacement 

advertisement to be selected for display on the website, and cause the replacement advertisement 

to be served to the remote computing device. The browser is further configured to render the 

replacement advertisement in the predefined ad space.

49. DMG selects the replacement ad at least partially as a result of a replacement 

auction.

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50. DMG’s replacement auction is conducted in real time between the time the second 

communication is sent from the remote computing device and the time that the replacement 

advertisement is selected.

51. The predefined ad spaces on DMG’s website currently display an advertisement 

and the replacement advertisement (replaces the currently displayed advertisement).

52. RMC has suffered and is suffering damages as a result of DMG’s infringement, 

which damages may include lost profits or a reasonable royalty in an amount to be determined at 

trial.

53. DMG has had knowledge of the ’329 Patent and allegations of how the Accused 

website infringes claims of the ’329 Patent since at least May 17, 2023, when DMG received a 

notice of patent infringement letter from RMC. DMG’s infringement of the ’329 Patent is therefore 

willful and deliberate, entitling RMC to increased damages under 35 U.S.C. § 284.

54. DMG’s conduct is also exceptional, entitling RMC to recover its attorneys’ fees 

and costs incurred in prosecuting this action under 35 U.S.C. § 285.

Count II: Infringement of U.S. Patent No. 11,741,482

55. RMC reasserts and realleges the previous paragraphs of this Complaint as though 

set forth fully here.

56. DMG directly infringes at least claims 1, 3, 4, and 6 of the ’482 Patent by operating 

its website at dailymail.co.uk, as further detailed in Exhibit D (incorporated by reference).

2 DMG

performs each and every limitation of the claimed method: 

1. A method for rendering advertisement content in an ad content display 

page, wherein the ad content display page includes (i) a predefined area 

configured to display advertisement content, the predefined area being a 

2 Exhibit D is the claim chart provided to Defendant on May 17, 2023, before the issue date of the 

’482 Patent. Allowed claims 2, 4, 5, and 7 issued as identical claims 1, 3, 4, and 6.

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portion of the ad content display page, and (ii) page content displayed in 

other portions of the ad content display page, the page content being

separate from the advertisement content, the ad content display page being 

scrollable to allow a portion of the ad content display page to appear in a 

visible area of a browser window of a browser that is configured to be 

operated by a remote computing device, the method comprising:

(a) determining whether a predefined portion of the predefined area of the 

ad content display page is in the visible area of the browser window; and

(b) in response to a determination that the predefined portion of the 

predefined area of the ad content display page is in the visible area of the 

browser window, causing a communication to be sent from the remote 

computing device to one or more dispatcher servers, wherein the one or 

more dispatcher servers are configured to:

(i) receive the communication, and

(ii) cause advertisement content to be served to the remote 

computing device, wherein the browser is configured to render the 

advertisement content in the predefined area of the ad content 

display page, and

wherein the advertisement content first appears in the predefined area of the 

ad content display page only after the one or more dispatcher servers serve 

the advertisement content to the remote computing device and the browser 

renders the advertisement content in the predefined area of the ad content 

display page.

3. The method of claim 2 wherein the advertisement content is selected at 

least partially as a result of an auction.

4. The method of claim 3 wherein the auction is conducted in real time 

between the time the communication is sent from the remote computing 

device and the time that the advertisement content is selected.

6. The method of claim 1 further comprising:

(c) maintaining the same advertisement content that was previously 

rendered in the predefined area for at least a predefined period of time 

during the time period that the predefined portion of the predefined area of 

the ad content display page is in the visible area of the browser window.

57. DMG performs the following claimed method for rendering advertisement content 

in an ad content display page via its website, dailymail.co.uk (also known as MailOnline and 

dailymail.com).

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58. DMG’s website comprises ad content display pages. DMG’s website includes a 

predefined ad space and separate page content (e.g., news headlines and images) displayed in other 

portions of the website. DMG’s website is scrollable to allow a portion of it to appear in a visible 

area of a browser window.

59. DMG’s website is viewable on browsers configured to be operated by remote 

computing devices (e.g., laptops, smartphones, and tablets).

60. DMG determines whether a predefined portion (e.g., at least 50%) of the predefined 

ad space is visible. In response to this determination, DMG causes a communication (e.g., an ad 

request) to be sent from the remote computing device to one or more dispatcher servers.

61. The dispatcher servers are configured to receive the ad request and cause 

advertisement content to be served to the remote computing device. The browser is configured to 

render the advertisement content in the predefined ad space. The advertisement content first 

appears in the predefined ad space only after the dispatcher servers serve the advertisement content 

to the remote computing device and the browser renders the advertisement content in the 

predefined ad space of the website.

62. DMG selects advertisements at least partially as a result of an auction.

63. DMG’s auction is conducted in real time between the time the communication is 

sent from the remote computing device and the time that the advertisement content is selected.

64. DMG maintains the same advertisement content in the predefined ad space for at 

least a predefined period of time (e.g., 20 seconds) during the time period that the predefined 

portion (e.g., at least 50%) of the ad space is in the visible area of the browser window.

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65. RMC has suffered and is suffering damages as a result of DMG’s infringement, 

which damages may include lost profits or a reasonable royalty in an amount to be determined at 

trial.

66. DMG has had knowledge of the ’482 Patent and allegations of how the Accused 

website infringes claims of the ’482 Patent since at least May 17, 2023. DMG’s infringement of 

the ’482 Patent is therefore willful and deliberate, entitling RMC to increased damages under 35 

U.S.C. § 284.

67. DMG’s conduct is also exceptional, entitling RMC to recover its attorneys’ fees 

and costs incurred in prosecuting this action under 35 U.S.C. § 285.

Jury Demand

RMC demands a trial by jury on all issues that may be so tried. 

Request For Relief

WHEREFORE, Plaintiff RMC requests that this Court enter judgment in its favor and 

against Defendant DMG as follows:

A. Adjudging, finding, and declaring that DMG has infringed the ’329 Patent, and the 

’482 Patent under 35 U.S.C. § 271;

B. Awarding the past damages arising out of DMG’s infringement of the ’329 Patent, 

and the ’482 Patent to RMC either in RMC’s lost profits or in an amount no less than a reasonable 

royalty, together with prejudgment and post-judgment interest, in an amount according to proof;

C. Adjudging, finding, and declaring that DMG’s infringement is willful and awarding 

enhanced damages and fees as a result of that willfulness under 35 U.S.C. § 284;

D. Awarding attorneys’ fees, costs, or other damages pursuant to 35 U.S.C. §§ 284 or 

285 or as otherwise permitted by law;

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E. Entering an injunction preventing DMG from continuing to infringe the ’329 

Patent, and the ’482 Patent; 

J. Granting RMC such other further relief as is just and proper, or as the Court deems 

appropriate. 

DATED: April 30, 2024

Respectfully submitted,

/s/ Alison A. Richards

Alison Aubry Richards

IL Bar # 6285669 (also admitted in ED Texas)

arichards@giplg.com

Global IP Law Group, LLC

55 West Monroe Street, Suite 3400

Chicago, IL 60603

Telephone: (312) 241-1500

Attorney for Plaintiff Rich Media Club, LLC

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CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing document was filed electronically in compliance 

with Local Rule CV-5(a). Therefore, this document was served on all counsel who are deemed

to have consented to electronic service on April 30, 2024. Local Rule CV-5(a)(3)(A).

/s/ Alison Richards

Alison Aubry Richards

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