Image Pro Solutions LLC v. Optoma Technology Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Image Pro Solutions LLC (Delaware)
  • Defendant: Optoma Technology, Inc. (California)
  • Plaintiff’s Counsel: Insight, PLC; Ni, Wang & Massand, PLLC
• Case Identification: 5:23-cv-02324, N.D. Cal., 05/12/2023
• Venue Allegations: Venue is alleged to be proper in the Northern District of California because Defendant is a California corporation with its principal place of business in Fremont, California, within the district.
• Core Dispute: Plaintiff alleges that Defendant’s digital projectors, when used with its "Projection Mapper" mobile application, infringe five patents related to methods of mapping and projecting imagery onto three-dimensional or non-coplanar surfaces.
• Technical Context: The technology addresses the optical distortion that occurs when projecting images onto complex surfaces, enabling the creation of immersive displays and artistic installations by precisely aligning digital content with physical objects.
• Key Procedural History: The complaint states the asserted patents stem from the innovation of Klip Collective, Inc., a company specializing in immersive art installations. The patents-in-suit belong to a large family sharing a common specification and a 2004 priority date, developed through a long chain of continuation and divisional applications. The complaint does not mention any prior litigation or post-grant validity challenges involving these patents.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,407,297 - "Image Projection System and Method"

• Issued: August 5, 2008

The Invention Explained

• Problem Addressed: Conventional systems cannot project images onto complex surfaces, such as curved, angled, or adjoining non-coplanar walls, without causing substantial optical distortion of the image (’297 Patent, col. 1:36-51).
• The Patented Solution: The invention proposes a method where a projector is fixed in place and connected to a computer running video compositing software. A user inserts a digital shape, or "matte," into the software's composition window, projects its image onto the physical architecture, and then adjusts the matte's parameters (size, shape, position) within the software until the projected image of the matte perfectly aligns with the real-world surface it is intended to cover (’297 Patent, Abstract). Once the matte is aligned, imagery can be placed within it, ensuring the final projected content appears undistorted on the complex surface (’297 Patent, Fig. 9).
• Technical Importance: This approach enabled precise, software-based alignment of projected content onto three-dimensional objects from a single projection source, which was a significant step in making complex projection mapping more accessible (Compl. ¶16).

Key Claims at a Glance

• The complaint asserts independent method claim 1 (Compl. ¶31).
• Essential elements of claim 1 include:
  • identifying a projection location from which a line of sight exists to one or more desired surfaces of the architecture;
  • securing a projection device in a fixed orientation in the projection location;
  • operably coupling the projection device to a computer device comprising a video compositing application;
  • opening a composition window of the video compositing application;
  • projecting content of the composition window onto the architecture;
  • inserting a matte into the composition window, an image of the matte being projected onto the architecture; and
  • adjusting the size, shape, position, orientation, or any combination thereof of the matte within the composition window until edges of the projected image of the matte become aligned with edges of one of the desired surfaces of the architecture.
• The complaint alleges infringement of dependent claims 2-20 (Compl. ¶33).

U.S. Patent No. 8,632,192 - "Image Projection Kit and Method and System of Distributing Image Content for Use with the Same"

• Issued: January 21, 2014

The Invention Explained

• Problem Addressed: The patent family's core technology creates a new medium for artistic and commercial displays, which in turn creates a need for a system to distribute specialized visual content tailored for this medium (’192 Patent, col. 3:36-41).
• The Patented Solution: The invention describes a commercial ecosystem for projection mapping content. The method involves storing "projection clip files" on a network-accessible server, authenticating users, tracking which files they download, and charging a fee for the downloaded content (’192 Patent, Abstract). This system facilitates a marketplace for artists and content creators to provide visuals for end-users employing projection mapping technology (’192 Patent, col. 12:35-56).
• Technical Importance: This patent extends the technical projection method into a commercial framework, contemplating a consumer or "prosumer" market where users can acquire new content for their projection setups (Compl. ¶¶ 23-24).

Key Claims at a Glance

• The complaint asserts independent method claim 7 (Compl. ¶37).
• Essential elements of claim 7 include:
  • storing a plurality of projection clip files on a server that is accessible via a wide area network;
  • authenticating a user's identity prior to allowing downloading of one or more of the projection clip files stored on the server;
  • identifying a first projection clip file, from among the plurality of projection clip files, selected for downloading by the authenticated user;
  • charging the user a fee for the first projection clip file; and
  • sending the first projection clip file to a computer programmed with software configured to insert one or more of the projection clip files into a matte of an electronic map corresponding to surface features of an architecture.
• The complaint does not explicitly reserve the right to assert other claims from the ’192 Patent.

U.S. Patent No. 9,560,307 - "Image Projection Kit and Method and System of Distributing Image Content for Use with the Same"

• Issued: January 31, 2017
• Technology Synopsis: The patent discloses a method for projecting imagery onto multiple non-coplanar surfaces by viewing one or more mattes on a display, adjusting a first matte, and projecting the adjustments so that the edges of the projected matte align with the edges of a physical surface (Compl. ¶41). This appears to be a further refinement of the core mapping technology.
• Asserted Claims: Independent method claim 1 is asserted (Compl. ¶42).
• Accused Features: The accused features are the functionalities of the Projection Mapper application that allow users to map content onto various surfaces simultaneously (Compl. ¶¶ 28, 43).

U.S. Patent No. 10,084,998 - "Image Projection Kit and Method and System of Distributing Image Content for Use with the Same"

• Issued: September 25, 2018
• Technology Synopsis: The patent describes a method of projecting imagery by adjusting a matte on a display device to control the size, shape, and position of the corresponding projected image of that matte on a physical surface (Compl. ¶47). Imagery content is then associated with the adjusted matte and projected within its boundaries on the surface.
• Asserted Claims: Independent method claim 1 is asserted (Compl. ¶48).
• Accused Features: The core functionality of the Projection Mapper application, which allows users to adjust digital content on a screen to map it onto real-world objects, is accused of infringement (Compl. ¶¶ 28, 49).

U.S. Patent No. 10,567,718 - "Image Projection Kit and Method and System of Distributing Image Content for Use with the Same"

• Issued: February 18, 2020
• Technology Synopsis: The patent discloses a method of projecting imagery that involves projecting an image of a matte from a projector, adjusting the projected image by manipulating the matte on a display device, associating imagery content with the matte, and projecting that associated imagery within the projected matte's image (Compl. ¶53).
• Asserted Claims: Independent method claim 2 is asserted (Compl. ¶54).
• Accused Features: The capabilities of the Projection Mapper application that enable users to adjust and map content onto multiple surfaces and shapes are accused of infringement (Compl. ¶¶ 28, 55).

III. The Accused Instrumentality

Product Identification

The "Accused Instrumentalities" are identified as various Optoma digital projector models, exemplified by the Optoma ZH403 model, when operating with the Optoma "Projection Mapper" application (Compl. ¶¶ 21, 27). The complaint includes a graphic of the "Projection Mapper" application logo (Compl. p. 6).

Functionality and Market Context

The "Projection Mapper" is a mobile application for Android, iOS, and Amazon Kindle Fire devices that connects to a projector via standard protocols like Airplay, Chromecast, or HDMI (Compl. ¶¶ 25, 26). Its function is to "enable users to project images and video simultaneously onto multiple flat surfaces or three-dimensional objects" (Compl. ¶23). It allegedly allows users to "set multiple pieces of content to fit different surfaces simultaneously and to map onto multiple surfaces and shapes" (Compl. ¶28). The complaint alleges the application was first made available for download on or around October 25, 2016, and was marketed as a way to bring "professional-level mapping to the average consumer" for entertainment displays (Compl. ¶¶ 22, 24).

IV. Analysis of Infringement Allegations

U.S. Patent No. 7,407,297 Infringement Allegations

U.S. Patent No. 8,632,192 Infringement Allegations

The complaint does not provide sufficient detail for a comprehensive claim chart analysis of method claim 7. The core of claim 7 is a method for distributing and charging for "projection clip files" via a server. The complaint alleges that Optoma made its "Projection Mapper" application available for download from various app stores (Compl. ¶22). However, it does not explicitly allege that Optoma stores, authenticates users for, identifies downloads of, or charges fees for discrete "projection clip files" as distinct from the application itself. The infringement theory appears to be that the distribution of the application through commercial app stores meets these claim elements.

Identified Points of Contention

• Scope Questions: The dispute over the ’297 Patent may turn on whether the term "computer device," as understood from a 2004 priority date, can be construed to read on a modern smartphone or tablet, and whether the user interface of the "Projection Mapper" application constitutes a "composition window" and utilizes "mattes" as those terms are used in the patent's specification, which heavily references professional video editing software. For the ’192 Patent, a key question is whether the claimed "projection clip files" can be interpreted to mean the Projection Mapper application file itself, or if it is limited to discrete pieces of visual content.
• Technical Questions: A factual question for the '297 patent will be what evidence demonstrates that the accused app's functionality for fitting content to a surface performs the specific claim step of adjusting a matte until the projected image of the matte aligns with the physical edges of the surface. For the '192 patent, a central question is what evidence shows that Optoma performs the claimed steps of authenticating, identifying, and charging, versus those actions being performed by third-party app stores for the distribution of the application rather than for "projection clip files."

V. Key Claim Terms for Construction

• The Term: "matte" (from ’297 Patent, claim 1)

• Context and Importance: This term is the fundamental building block of the patented mapping process. Its definition is critical because if the accused "Projection Mapper" application does not use "mattes" as construed by the court, there may be no infringement. Practitioners may focus on this term because Defendant could argue its consumer-grade application uses a different, simpler mechanism (e.g., adjustable content layers) that does not meet the definition of a "matte" as understood in the professional video compositing context described in the patent.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent abstract describes adjusting the "size, shape, position, orientation" of the matte, suggesting it is a flexible digital object used to define a projection area, a concept that could be interpreted broadly.
  • Evidence for a Narrower Interpretation: The specification's repeated references to Adobe® After Effects® and its workflow could support a narrower construction, limiting the term "matte" to the specific meaning it holds within that professional software environment (’297 Patent, col. 7:36-38).

• The Term: "projection clip files" (from ’192 Patent, claim 7)

• Context and Importance: The identity of the "projection clip files" is central to the '192 patent's infringement theory. The case may depend on whether this term can encompass the application file for the "Projection Mapper" itself or if it is restricted to discrete pieces of visual content (e.g., videos, images) intended for use with the application.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself does not explicitly exclude a software application file that contains or enables the projection of imagery.
  • Evidence for a Narrower Interpretation: The specification describes "imagery content files" and gives examples like "video clips," "ambient images," and "floaters," suggesting that "projection clip files" are discrete, downloadable visual assets rather than the tool used to project them (’192 Patent, col. 5:27-41; col. 3:51-54).

VI. Other Allegations

• Indirect Infringement: The complaint's infringement counts are for direct infringement by "Defendant and its end-user customers" (Compl. ¶¶ 31, 37, 42, 48, 54). While not pleaded as a separate count, this language raises the possibility of an induced infringement theory where Optoma is alleged to induce its customers to directly infringe by providing the "Projection Mapper" application and instructions for its use.
• Willful Infringement: The complaint alleges that "Defendant has had knowledge of infringement of the Asserted Patents by the Accused Instrumentalities since at least the filing of the Complaint" (Compl. ¶19). This allegation of post-suit knowledge forms the basis for the request for enhanced damages due to willful infringement (Compl. p. 13).

VII. Analyst’s Conclusion: Key Questions for the Case

• Claim Construction and Technological Evolution: A core issue will be one of definitional scope: can terms like "matte" and "composition window," which are rooted in the context of 2004-era professional video software described in the patent, be construed to cover the user interface elements and functionalities of a modern, consumer-focused mobile application?
• Sufficiency of Factual Allegations: For the patents related to content distribution (e.g., the ’192 Patent), a key evidentiary question will be one of agency and subject matter: does the complaint provide sufficient facts to show that Optoma's distribution of a software application through third-party platforms like the Apple App Store constitutes the claimed method of storing, authenticating, and charging for "projection clip files"?
• Operational Equivalence: A central factual dispute may concern functional equivalence: does the accused "Projection Mapper" application, in practice, perform the specific, multi-step alignment process required by the asserted method claims, or is there a fundamental mismatch in its technical operation compared to the process disclosed in the patents-in-suit?