DCT
2:17-cv-08650
Nsixty LLC v. Open Air Entertainment LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NSixty, LLC (Ohio)
- Defendant: Open Air Entertainment LLC (California)
- Plaintiff’s Counsel: Gordon Rees Scully Mansukhani, LLP; Ulmer & Berne LLP
- Case Identification: 2:17-cv-08650, C.D. Cal., 11/30/2017
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the district, has committed alleged acts of infringement in the district, and maintains a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s digital photo and video kiosks infringe two patents related to systems for recording media at a kiosk and accessing it via a network.
- Technical Context: The technology concerns kiosk-based systems, often used at events or venues, that allow users to create video or photo messages and later retrieve them through a web-based interface.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the patents-in-suit and the alleged infringement via letters dated July 7, 2017, and October 3, 2017. Public records subsequent to the filing of this complaint indicate that all claims of both asserted patents, U.S. Patent Nos. 8,619,115 and 9,313,456, were cancelled in ex parte reexamination proceedings, which concluded on October 13, 2020, and August 14, 2023, respectively.
Case Timeline
| Date | Event |
|---|---|
| 2009-01-15 | Priority Date for ’115 & ’456 Patents |
| 2013-12-31 | ’115 Patent Issued |
| 2016-04-12 | ’456 Patent Issued |
| 2017-07-07 | First Pre-Suit Notice Letter Sent |
| 2017-10-03 | Second Pre-Suit Notice Letter Sent |
| 2017-10-12 | Defendant Acknowledges Receipt of Notice |
| 2017-11-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,619,115 - "Video Communication System and Method for Using Same," Issued December 31, 2013
The Invention Explained
- Problem Addressed: The patent describes the limitations of traditional methods for capturing and sharing memories from events, such as physical postcards being tedious and digital cameras or phones having limited sharing capabilities and requiring the user to carry the device ('115 Patent, col. 1:16-52).
- The Patented Solution: The invention proposes a system featuring a kiosk where a user can record a video message ('115 Patent, col. 2:19-21). The kiosk collects user identification data, associates it with the video, and uploads the data to a remote database. The system then provides the user with a way to access the video remotely, for instance, by sending an email with a web link to a website where the video can be viewed ('115 Patent, Abstract; col. 2:50-60). This architecture is depicted in the system diagram of Figure 1.
- Technical Importance: The technology aimed to centralize media capture and distribution at specific venues, offering a streamlined alternative to personal devices for creating and sharing event-specific content ('115 Patent, col. 1:21-28).
Key Claims at a Glance
- The complaint asserts "one or more claims... including claim 1" (Compl. ¶17).
- Independent Claim 1 of the '115 Patent recites:
- A video communication system comprising a portable kiosk which itself comprises an integrated camera, network connection, and graphical user interface.
- A database connected to the network, configured to receive the video and identification data from the kiosk and associate them.
- A remote access point (e.g., a website) for accessing the video from the database.
- A process wherein a user inputs identification data into the website, and the database matches that data with the data associated with the video to grant the user access.
U.S. Patent No. 9,313,456 - "Video Communication System and Method for Using Same," Issued April 12, 2016
The Invention Explained
- Problem Addressed: As a continuation of the application for the ’115 Patent, the ’456 patent addresses the same technical challenge: the inconvenience and limitations of existing methods for capturing and sharing media from events ('456 Patent, col. 1:21-54).
- The Patented Solution: The invention describes a "portable kiosk system" with integrated components for capturing media and user data ('456 Patent, Abstract). The kiosk is configured to associate the captured media with the user's identification information and then transmit the associated data over a network, enabling the media to be accessed elsewhere ('456 Patent, col. 6:19-24). This solution focuses on the kiosk's role as the integrated hub for capture, association, and transmission.
- Technical Importance: This approach provided a self-contained, event-based solution for creating and distributing user-generated media content without relying on the user's own hardware for capture or initial transmission ('456 Patent, col. 1:31-43).
Key Claims at a Glance
- The complaint asserts "one or more claims... including claim 1" (Compl. ¶32).
- Independent Claim 1 of the ’456 Patent recites:
- A portable kiosk system comprising an integrated input device for receiving user identification information and an integrated message-recording device for capturing media data.
- The portable kiosk component is configured to associate the captured media data with the user's identification information.
- The kiosk is also configured to transmit the captured media data to a device on a communication network to enable access to that data.
III. The Accused Instrumentality
Product Identification
The "Open Air Photobooth" and "Micro Booth" (Compl. ¶11).
Functionality and Market Context
The complaint alleges that the accused products are portable photo booths that contain integrated cameras for recording video, network connections to the Internet, and graphical user interfaces for inputting user identification data (Compl. ¶20, ¶34). The functionality is said to include the ability to connect to a user's social media account for sharing video (Compl. ¶20). Defendant's homepage is cited as promoting "Instant Email, Facebook, Twitter, and Instagram feeds" (Compl. ¶21). The complaint further alleges that the booths transmit captured media to an online database of "Open Air Photobooth Galleries," identified as being hosted on SmugMug, which requires login credentials for access (Compl. ¶25-26, ¶34).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'115 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A video communication system comprising: a portable kiosk comprising: a camera configured to record a video communication; a network connection capable of communicating with a network; and a graphical user interface... | Defendant’s "Open Air Photobooth" and "Micro Booth" are alleged to be portable and contain integrated cameras, network connections for the Internet, and graphical user interfaces for data input. | ¶20 | col. 5:12-17 |
| wherein said camera, network connection and graphical user interface are integrated within said portable kiosk | The complaint alleges these components are integrated within the accused photo booths. | ¶20 | col. 5:18-20 |
| a database connected to said network, said database configured to receive said video communication and said identification data from said kiosk and associate said video communication with said identification data | Defendant is alleged to maintain an online database of galleries on SmugMug that receives and stores the video communications and associated user data. | ¶25-26 | col. 5:21-25 |
| a remote access point configured to access said video communication from said database by way of a website | The SmugMug website is alleged to be the remote access point for the database of video communications. | ¶25-26 | col. 5:26-28 |
| wherein said user inputs said identification data into said website to communicate with said database, and further wherein said database matches said identification data from said website with said identification data... | The complaint alleges the SmugMug website can be accessed by an email address and password as credentials, which suggests a process of matching user input data to data stored in the database. | ¶26 | col. 5:29-34 |
- Identified Points of Contention:
- Technical Question: What evidence demonstrates that the accused system's login process performs the specific "matching" function required by the claim, where identification data from the website is matched with identification data previously associated with the video communication at the kiosk?
- Scope Question: Does the third-party SmugMug platform, as allegedly used by Defendant, meet the claim limitation of "a database connected to said network" that is part of the claimed "video communication system," or is it a separate, general-purpose service?
'456 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A portable kiosk system comprising: an input device integrated within the portable kiosk configured to receive identification information associated with a user | The accused booths are alleged to be portable and have integrated graphical user interfaces for inputting a user's identification data. | ¶34 | col. 4:32-35 |
| and a message-recording device integrated within the portable kiosk and configured to capture media data | The accused booths allegedly contain integrated cameras configured to record video (i.e., capture media data). | ¶34 | col. 4:52-54 |
| wherein the portable kiosk component is configured to: associate the captured media data with the identification information associated with the user | The system is alleged to connect to a user's online "social media" account, which suggests an association between the media and user identity. | ¶34 | col. 2:31-34 |
| and transmit, to a device connected to a communication network, the captured media data to enable access of the captured media data via the communication network | The accused booths are alleged to be configured to transmit captured media data to the online database of "Open Air Photobooth Galleries" for later access. | ¶34 | col. 2:25-27 |
- Identified Points of Contention:
- Scope Question: Does a "photobooth" designed to capture photos and video fall within the scope of a "message-recording device" as contemplated by the patent?
- Technical Question: What specific function in the accused products performs the affirmative step of "associating" the captured media with the identification information within the portable kiosk component itself, as the claim structure suggests, prior to transmission?
V. Key Claim Terms for Construction
For the ’115 Patent:
- The Term: "portable kiosk"
- Context and Importance: The "portable kiosk" is the central component of the system claim. The construction of this term, particularly what components must be "integrated within" it, will define the physical and functional boundaries of the infringing device. Practitioners may focus on this term to determine if a modular setup (e.g., a tablet on a stand) meets the integration requirement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the kiosk can be configured in various ways, including as a "mobile unit" or "installed in a vehicle," which may support a broader definition of portability and form factor ('115 Patent, col. 5:11-12).
- Evidence for a Narrower Interpretation: The figures depict a substantial, "free standing unit" with a specific physical housing (body 28), which might suggest a more integrated, self-contained structure is required ('115 Patent, Fig. 2; col. 4:49-54).
For the ’456 Patent:
- The Term: "associate the captured media data with the identification information"
- Context and Importance: This is the key functional step linking the user to their content. The dispute may turn on where and how this association occurs. If the association happens on a remote server after upload, it may not meet the claim requirement that "the portable kiosk component is configured to" perform the association.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The summary describes a general process where "The video message and user information are uploaded to a database. The database associates the video message with the user information," which could be read to permit the association to occur at the database level ('456 Patent, col. 1:63-65).
- Evidence for a Narrower Interpretation: The structure of Claim 1 recites that the "portable kiosk component is configured to: associate..." and then "transmit...", implying the association is a function of the kiosk itself, performed locally before transmission. The detailed description states user information "may be stored on the memory component and associated with the corresponding video communication to be created by the user" ('456 Patent, col. 5:26-29).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant "instructed and encouraged customers to integrate" the photo booths with social media and that the booths "enable Defendant Open Air's customers to perform the unique functions claimed" (Compl. ¶19, ¶22, ¶34). These allegations are based on Defendant's marketing and the inherent functionality of the products.
- Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge. The complaint states that Defendant was put on notice of the patents and the alleged infringement by letters sent on July 7, 2017, and October 3, 2017, and that Defendant acknowledged receipt (Compl. ¶12-14, ¶27, ¶37).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue, arising from events subsequent to the complaint's filing, is one of case viability: given that all asserted claims of both patents-in-suit were cancelled during ex parte reexamination, what legal basis, if any, remains for the continuation of this infringement action?
- A central question of claim construction will be the scope of the "portable kiosk." The dispute will likely focus on whether the accused photobooths, which may use third-party cloud services for storage and access, constitute the self-contained system with the specific "database" and "remote access point" components required by the claims of the '115 patent.
- A key evidentiary question will be one of technical operation: does the accused system perform the specific "matching" and "associating" functions as claimed? Specifically, the court would need to determine if the association between user and media occurs locally on the kiosk as required by the '456 patent's claim language, or remotely on a server, which may create a mismatch with the claim's scope.