DCT
3:17-cv-04738
Contour IP Holding LLC v. GoPro Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Contour IP Holding, LLC (Utah) and iON Worldwide, Inc. (Delaware)
- Defendant: GoPro, Inc. (Delaware)
- Plaintiff’s Counsel: Shaw Keller LLP
- Case Identification: 3:17-cv-04738, D. Del., 11/30/2015
- Venue Allegations: Venue is based on Defendant's incorporation in Delaware, its substantial business and sales activities in the district, and its alleged commission of infringing acts within the district.
- Core Dispute: Plaintiff alleges that Defendant’s HERO action cameras, when used with the GoPro App, infringe patents related to wirelessly controlling a portable video camera and viewing a live preview from it on a separate device.
- Technical Context: The technology relates to the point-of-view (POV) or "action camera" market, which consists of compact, wearable, or mountable cameras used to capture first-person perspectives during various activities.
- Key Procedural History: The complaint discloses a significant history between the parties, including a prior lawsuit filed by Plaintiff in the District of Utah, which allegedly put Defendant on notice of the patents-in-suit as of January 5, 2015. Subsequently, Defendant filed petitions for inter partes review (IPR) against both asserted patents. The Patent Trial and Appeal Board (PTAB) instituted review on all asserted claims of one patent and a subset of claims of the other, but notably denied institution on claims 3-10 of U.S. Patent No. 8,890,954, finding no reasonable likelihood that those claims were unpatentable.
Case Timeline
| Date | Event |
|---|---|
| 2010-09-13 | ’954 and ’694 Patents Priority Date |
| 2012-12-31 | Accused HERO3 Product Line Introduced |
| 2014-11-18 | ’954 Patent Issued |
| 2014-11-25 | ’694 Patent Issued |
| 2014-11-25 | Plaintiff files initial Utah Action against a retailer |
| 2015-01-05 | Defendant GoPro served in amended Utah Action |
| 2015-04-20 | Defendant files IPR petitions against Asserted Patents |
| 2015-10-28 | PTAB issues institution decisions on IPR petitions |
| 2015-11-30 | Complaint Filed in D. Del. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,890,954 - "Portable Digital Video Camera Configured for Remote Image Acquisition Control and Viewing," Issued November 18, 2014
The Invention Explained
- Problem Addressed: The patent describes a market in which early point-of-view cameras were often cumbersome, requiring a lens to be tethered to a separate recording device, or were integrated but lacked a practical way for users to frame their shots or control the camera once mounted. (’954 Patent, col. 1:20-51).
- The Patented Solution: The invention is an integrated, hands-free portable video camera that uses a wireless connection protocol, such as Bluetooth, to communicate with a separate controller like a smartphone. (’954 Patent, col. 2:53-62). This connection allows the camera to stream image content to the remote device for live preview and enables the user to send control signals from the device back to the camera to adjust settings or initiate recording. (’954 Patent, Abstract).
- Technical Importance: This approach solved the critical usability problem of aiming and operating a camera that is mounted out of sight and reach, such as on a helmet or sports equipment. (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts at least one claim of the patent; independent claim 1 is representative. (Compl. ¶23).
- Essential Elements of Claim 1:
- An integrated, hands-free, portable, viewfinderless point of view digital video camera.
- A lens and an image sensor for producing real-time video image data.
- A wireless connection device to send image content to and receive control signals from a wireless controller.
- A camera processor that:
- Generates a first video image content at a lower resolution and a second video image content at a higher resolution.
- Communicates the first (lower-res) content to the controller for preview.
- Receives control signals from the controller to adjust settings prior to recording.
- In response to a record command, stores the second (higher-res) content at the camera.
U.S. Patent No. 8,896,694 - "Portable Digital Video Camera Configured for Remote Image Acquisition Control and Viewing," Issued November 25, 2014
The Invention Explained
- Problem Addressed: Similar to its sister patent, the ’694 Patent addresses the difficulty of operating and aiming integrated, hands-free POV cameras that lack built-in viewfinders. (’694 Patent, col. 1:20-51).
- The Patented Solution: The patent claims a system comprising a compact, hands-free video camera and a separate personal portable computing device. The camera wirelessly transmits its view to the computing device, which displays the live preview, allowing the user to adjust the camera's physical angle. The computing device then generates control signals to operate the camera remotely. (’694 Patent, Abstract; col. 2:55-65).
- Technical Importance: This system-level invention defined the now-common paradigm of using a smartphone as the command-and-control center for a separate, wirelessly connected action camera. (Compl. ¶¶33-34).
Key Claims at a Glance
- The complaint asserts at least one claim of the patent; independent claim 1 is representative. (Compl. ¶23).
- Essential Elements of Claim 1:
- A system comprising a hands-free compact portable video camera and a personal portable computing device.
- The camera includes an image sensor, a processor, and a wireless connection device.
- The camera includes a mounting interface for physical attachment.
- The computing device is configured to receive and display real-time video image content from the camera.
- The displayed preview allows a user to manually adjust the camera's angle.
- The computing device is further configured to generate control signals for the camera.
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are at least the GoPro HERO3, HERO3+, and HERO4 cameras, when used in combination with the GoPro App software running on a separate device like a smartphone or tablet. (Compl. ¶¶24, 25).
- Functionality and Market Context: The complaint alleges the accused cameras possess "wireless capability" that, when paired with the GoPro App, allows a user to obtain a "live preview for easy shot-framing" and "full remote control of all camera functions" on their mobile device. (Compl. ¶¶24, 34). A screenshot from GoPro's website promoting the GoPro App is provided as evidence for these functions. (Compl. ¶34, Ex. 7). Plaintiff asserts that Defendant is a direct competitor that holds the largest share of the action camera market and that its significant growth in revenue and profit is attributable to the introduction of these accused wireless features. (Compl. ¶¶51, 59, 61).
IV. Analysis of Infringement Allegations
- 8,890,954 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An integrated, hands-free, portable, viewfinderless point of view digital video camera... | The accused GoPro HERO3, HERO3+, and HERO4 cameras are compact, mountable POV cameras that lack traditional viewfinders. | ¶24 | col. 2:42-45 |
| a camera processor configured to... generate... first video image content at a first resolution and second video image content at a second resolution... | The GoPro App provides a "live preview" on a mobile device (the alleged first, lower-resolution content) while the camera records high-definition video to its internal storage (the alleged second, higher-resolution content). | ¶34 | col. 5:12-20 |
| communicate the first video image content using the wireless connection protocol device to the wireless connection-enabled controller... | The camera's "wireless capability" is used to transmit the live preview to a smartphone or tablet running the GoPro App. | ¶¶24, 33, 34 | col. 5:21-25 |
| receive the control signals from the wireless connection-enabled controller... | The GoPro App provides "full remote control of all camera functions," allowing the user to send commands from the mobile device to the camera. | ¶¶34, 37 | col. 5:26-27 |
| adjust image capture settings of the video camera prior to recording the scene based at least in part on... the control signals... | User manuals allegedly instruct users on how to remotely adjust settings like resolution and frames per second via the GoPro App. | ¶33 | col. 5:28-32 |
| in response to a record command, cause the second video image content to be stored at the video camera... | The remote control functionality includes starting and stopping the recording of video, which is stored on the camera's memory card. | ¶34 | col. 5:33-35 |
- 8,896,694 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A point of view digital video camera system, comprising: a hands-free compact portable video camera... and a personal portable computing device... | The system consists of the accused HERO cameras used in combination with a smartphone or tablet running the GoPro App. | ¶¶24, 25 | col. 29:3-12 |
| The camera includes... a wireless connection protocol device... to send real time video image content... and receive control signals... | The HERO cameras have "wireless capability" to connect to the GoPro App for two-way communication. | ¶¶24, 33, 34 | col. 29:13-20 |
| a mounting interface coupled to the video camera for mounting the video camera... | Defendant sells camera mounts for use with the accused cameras. | ¶25 | col. 29:21-23 |
| the personal portable computing device configured to receive and display the real time video image content from the video camera... | The GoPro App on a mobile device displays a "live preview" from the camera. A screenshot from GoPro's webpage states the app allows a user to "See what your camera sees with live preview." (Compl. ¶34, Ex. 7). | ¶34 | col. 29:31-35 |
| to allow a user of the video camera to manually adjust an angle of the video camera... | The purpose of the live preview is for "easy shot-framing," which involves the user physically aiming the camera while viewing the preview on the mobile device. | ¶34 | col. 29:35-39 |
| wherein the personal portable computing device is further configured to... generate control signals for the video camera... | The GoPro App provides "full remote control of all camera functions," enabling the mobile device to act as a remote control. | ¶34 | col. 29:40-42 |
- Identified Points of Contention:
- Technical Questions: A primary question will be whether the accused GoPro system technically performs the "generate...first video image content...and second video image content" limitation of the ’954 patent. The complaint relies on marketing materials describing a "live preview," but does not provide technical evidence that this involves the generation of two distinct video streams at different resolutions as required by the claim, versus, for example, downsampling a single stream for transmission.
- Scope Questions: The term "viewfinderless" in the ’954 patent may be a point of dispute. If any of the accused HERO camera models include an integrated LCD screen that can be used for framing, the question arises as to whether such a camera can be considered "viewfinderless" within the meaning of the patent.
V. Key Claim Terms for Construction
The Term: "generate... first video image content at a first resolution and second video image content at a second resolution" (’954 Patent, Claim 1)
- Context and Importance: This term is central to the infringement theory for the ’954 patent. The outcome of the case may depend on whether GoPro's transmission of a "live preview" while being capable of recording a higher quality video meets this limitation. Practitioners may focus on whether "generate" requires the creation of two separate, concurrent data streams.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes a system that provides "control signals or stream[s] data to a wearable video camera and... access[es] image content stored on or streaming from" it. (’954 Patent, col. 2:58-62). This language could be argued to encompass a single capture process that results in two outputs: one streamed (lower-res) and one stored (higher-res).
- Evidence for a Narrower Interpretation: The claim language requires the processor to "generate" two distinct "contents." A defendant may argue this requires two active and separate generation processes. The patent’s emphasis on using Bluetooth, a relatively low-bandwidth protocol at the time, could suggest the invention was conceived as necessarily creating a dedicated, lower-resolution stream for viable transmission, separate from the main high-resolution recording process. (’954 Patent, col. 2:56-58).
The Term: "viewfinderless" (’954 Patent, Claim 1)
- Context and Importance: This term's definition is critical for determining the scope of products covered by the claim. Some accused HERO camera models may have been sold with integrated LCD screens. If "viewfinderless" is construed to mean a complete absence of any on-camera framing capability, such models might not infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s background discusses prior art including camcorders. (’954 Patent, col. 1:24-34). A patentee could argue that "viewfinderless" is used to distinguish the claimed compact action camera from traditional camcorders with eye-level optical viewfinders, and that a small, back-mounted LCD screen does not negate the "viewfinderless" nature in this context.
- Evidence for a Narrower Interpretation: The abstract states the invention provides "remote image acquisition control and viewing." (’954 Patent, Abstract). A defendant could argue that the entire purpose of the remote viewing feature is to solve the problem created by the lack of an onboard viewfinder; therefore, a camera that includes an onboard screen for viewing would not be "viewfinderless."
VI. Other Allegations
- Indirect Infringement: The complaint makes extensive allegations of induced infringement. It alleges Defendant provides instructions to end users on how to use the accused features through product manuals, its website, social media channels (Twitter and Facebook), and YouTube tutorial videos, all of which allegedly encourage use of the GoPro App for remote control and live preview. (Compl. ¶¶32-45).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the patents and their infringement since at least January 5, 2015, the date it was served with a complaint alleging infringement in a prior litigation. (Compl. ¶¶27, 66). The complaint alleges that Defendant continued its infringing activities without modification despite this knowledge. (Compl. ¶65).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical implementation: Does the evidence show that GoPro’s system "generates" two distinct video streams—a lower-resolution one for the "live preview" and a higher-resolution one for storage—as required by the ’954 patent, or does it achieve the preview function through a different technical method that falls outside the claim scope?
- A second key issue will be one of definitional scope: Can the term "viewfinderless" be construed to cover action cameras that include an integrated LCD screen on the device itself, or is its meaning limited to devices with no on-camera image preview capability at all?
- A significant procedural question will be the impact of the parallel IPRs: How will the PTAB's mixed institution decision—denying review for certain claims of the '954 patent while granting it for others and for all claims of the '694 patent—influence case strategy, potential for a stay, and settlement leverage?