DCT
2:19-cv-02670
Remote Imaging Solutions LLC v. DJI Technology Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Remote Imaging Solutions LLC (Texas)
- Defendant: DJI Technology, Inc. (California)
- Plaintiff’s Counsel: Fernald Law Group APC; Stamoulis & Weinblatt LLC
- Case Identification: 2:19-cv-02670, C.D. Cal., 04/08/2019
- Venue Allegations: Venue is alleged to be proper based on Defendant conducting substantial business in the district, including making sales, soliciting business, and deriving substantial revenue from goods and services provided to individuals in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Inspire series of unmanned aerial vehicles, when controlled by the DJI GO software application, infringes a patent related to the teleoperation of an unmanned vehicle using a smart phone.
- Technical Context: The technology concerns using a general-purpose computing device, such as a smart phone, as a universal controller for unmanned vehicles (e.g., drones), which has become a standard interaction model in the consumer and prosumer drone market.
- Key Procedural History: The complaint alleges that Plaintiff’s agent provided Defendant with notice of the patent-in-suit on February 8, 2019. Subsequent to the filing of this complaint, the asserted patent was the subject of an Inter Partes Review (IPR2020-00345) at the U.S. Patent and Trademark Office, which concluded with a certificate issued on November 9, 2021, cancelling all claims (1-18) of the patent. This cancellation renders the patent unenforceable.
Case Timeline
| Date | Event |
|---|---|
| 2011-01-21 | Patent Priority Date ('230 Patent) |
| 2014-12-23 | Issue Date, U.S. Patent No. 8,918,230 |
| 2019-02-08 | Plaintiff's agent allegedly sends notice e-mail to Defendant |
| 2019-04-08 | Complaint Filed |
| 2019-12-23 | Inter Partes Review IPR2020-00345 Filed against '230 Patent |
| 2021-11-09 | USPTO Issues Certificate Cancelling All Claims of '230 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,918,230 - Teleoperation of Unmanned Ground Vehicle
- Issued: December 23, 2014
The Invention Explained
- Problem Addressed: The patent's background describes the state of the art for controlling unmanned vehicles as reliant on vehicle-specific, large, bulky, and expensive controllers that require significant user training and have short battery life (’230 Patent, col. 1:36-55).
- The Patented Solution: The invention proposes a method and system for controlling an unmanned vehicle using a smart phone. The smart phone establishes wireless communication with the vehicle, receives a video stream from the vehicle's camera, and displays both the video and vehicle controls overlaid on a touch-sensitive screen, allowing an operator to direct the vehicle by manipulating the on-screen controls (’230 Patent, Abstract; col. 2:1-4). FIG. 1 illustrates this system, showing a smart phone (110) wirelessly controlling a tracked unmanned vehicle (120) and displaying its video feed with control overlays (’230 Patent, Fig. 1).
- Technical Importance: This approach sought to create a universal, lightweight, and inexpensive unmanned vehicle controller by leveraging the widespread availability and advanced capabilities of commercial smart phones (’230 Patent, col. 1:53-56).
Key Claims at a Glance
- The complaint asserts independent claim 9 (Compl. ¶11).
- The essential elements of independent claim 9 are:
- A computerized method for controlling an unmanned vehicle, comprising:
- receiving, by a smart phone, a request to control the unmanned vehicle;
- establishing, by the smart phone, wireless communication between the smart phone and the unmanned vehicle;
- receiving, by the smart phone, a video stream generated by the unmanned vehicle;
- displaying the video stream and vehicle controls on a touch-sensitive display screen within the smart phone;
- manipulating the vehicle controls to direct the unmanned vehicle; and
- providing one or more controls to command the unmanned vehicle to one or more predetermined poses.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused instrumentalities as Defendant’s "Inspire 1, Inspire 1Pro/Raw and Inspire 2 with their associated software" (collectively, the "Accused Devices") (Compl. ¶11).
Functionality and Market Context
The complaint alleges that the Accused Devices operate via the "DJI GO App," which is installed on a smart phone or mobile device (Compl. ¶¶13-14). The app allegedly allows a user to control the unmanned aerial vehicle by establishing wireless communication between the smart phone and the vehicle via a transmitter (Compl. ¶15). The complaint includes a screenshot from DJI's website showing the DJI GO App interface, which displays a live video feed from the drone's camera with various on-screen controls for flight and camera functions (Compl. p. 5). The app provides functionality for live video viewing, gimbal control, and initiating functions like "Return to Home" (Compl. ¶¶17, 20, 36).
IV. Analysis of Infringement Allegations
'230 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving, by a smart phone, a request to control the unmanned vehicle; | The user launches the DJI GO App on a smart phone, which constitutes a request to control the vehicle. The complaint provides a screenshot from a user manual instructing users to download and launch the app. (Compl. p. 6). | ¶14 | col. 4:55-58 |
| establishing, by the smart phone, wireless communication between the smart phone and the unmanned vehicle; | The smart phone, via the DJI GO App, communicates wirelessly with the unmanned vehicle through a transmitter. | ¶15 | col. 4:60-62 |
| receiving, by the smart phone, a video stream generated by the unmanned vehicle; | The smart phone receives and displays a live HD video feed from the camera of the Accused Device. | ¶17 | col. 5:7-12 |
| displaying the video stream and vehicle controls on a touch-sensitive display screen within the smart phone; | The DJI GO App displays the live video stream and vehicle controls, such as for the gimbal and flight, on the smart phone's touch screen. A screenshot illustrates this combined display (Compl. p. 13). | ¶18 | col. 5:12-15 |
| manipulating the vehicle controls to direct the unmanned vehicle; | The user manipulates on-screen controls, such as touch-and-drag gestures, to direct the unmanned vehicle's movement and camera orientation. | ¶¶16, 21 | col. 4:26-31 |
| providing one or more controls to command the unmanned vehicle to one or more predetermined poses. | The Accused Devices allegedly include a control, such as a "Return to Home (RTH)" function, that commands the vehicle to fly back to its takeoff position, which is alleged to be a "predetermined pose." | ¶¶20, 22 | col. 2:34-36 |
- Identified Points of Contention:
- Scope Questions: A central question concerns the interpretation of "unmanned vehicle." While the patent is titled Teleoperation of Unmanned Ground Vehicle and the background focuses on ground vehicles like the PackBot®, the claims use the broader term "unmanned vehicle," which may support the complaint's allegation that the term reads on the accused aerial drones.
- Technical Questions: The complaint alleges that the "Return to Home" feature meets the "predetermined poses" limitation. A technical question for the court would be whether a single, dynamically set home point (the takeoff location) constitutes one of "one or more predetermined poses" as contemplated by the patent, or if the term requires multiple, user-programmable positions or attitudes.
V. Key Claim Terms for Construction
- The Term: "predetermined poses"
- Context and Importance: This term appears in the final limitation of asserted claim 9. The infringement allegation for this element relies on the accused "Return to Home" (RTH) feature (Compl. ¶¶20, 22). The validity of this infringement theory hinges on whether a function that directs the vehicle to its takeoff point falls within the scope of commanding the vehicle to "one or more predetermined poses."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification introduces this concept in the summary of the invention, stating that the method involves "providing one or more controls to command the unmanned vehicle to one or more predetermined poses" ('230 Patent, col. 2:34-36). The use of "one or more" could suggest that a single pose, such as a home location, is sufficient. The term "pose" is not explicitly defined, which may support a plain and ordinary meaning that could encompass a location and/or orientation.
- Evidence for a Narrower Interpretation: The specification does not provide specific examples of what constitutes a "predetermined pose" beyond the general recitation. A defendant might argue that in the context of robotics, a "pose" refers to a specific configuration of the vehicle's articulated parts or its six-degree-of-freedom orientation (position and attitude), and that a simple return to a geographic point does not meet this more technical definition. The lack of detailed examples could be argued to limit the term to what is explicitly described, which is very little.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by providing customers with products and instructing them on how to use the Accused Devices in an infringing manner through "on-line technical documentation, instructions, and technical support" (Compl. ¶¶27-28, 47.B).
- Willful Infringement: The willfulness allegation is based on Defendant's alleged knowledge of the '230 Patent as of its receipt of a notice letter on February 8, 2019 (Compl. ¶23). The complaint alleges that Defendant's continued infringement after this date has been objectively reckless and willful (Compl. ¶25).
VII. Analyst’s Conclusion: Key Questions for the Case
The trajectory of this case is fundamentally dictated by the post-filing cancellation of all claims of the '230 patent. While the complaint presented a colorable infringement claim at the time of filing, the subsequent administrative action by the USPTO is dispositive.
- A threshold and likely final issue is one of mootness: with all claims of the '230 patent having been cancelled by the USPTO in an Inter Partes Review proceeding subsequent to the complaint's filing, there is no longer an enforceable patent right upon which the lawsuit can be maintained.
- Had the patent survived, a core issue would have been one of definitional scope: can the term "predetermined poses," which is not explicitly defined in the patent, be construed to cover the accused "Return to Home" feature, which directs the drone to a single, dynamically-set takeoff location?
- A secondary legal question would have been one of indirect infringement: does providing user manuals and online support for the standard operation of a multi-feature product, which happens to include an allegedly infringing mode, rise to the level of specific intent to encourage infringement of every element of the asserted method claim?