DCT
1:18-cv-00243
Rothschild Patent Imaging LLC v. Autel Robotics USA LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Patent Imaging LLC (Texas)
- Defendant: Autel Robotics USA, LLC (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
- Case Identification: 1:18-cv-00243, D. Del., 02/09/2018
- Venue Allegations: Venue is asserted on the basis that Defendant is a Delaware corporation and is therefore deemed to reside in the district.
- Core Dispute: Plaintiff alleges that Defendant’s X-Star drone and associated Starlink mobile application infringe two patents related to wireless image distribution between mobile devices.
- Technical Context: The technology concerns systems and methods for selectively sharing digital images between a capturing device (e.g., a drone camera) and a receiving device (e.g., a smartphone) over a wireless network.
- Key Procedural History: The complaint notes that U.S. Patent No. 8,437,797 is a continuation of the application that resulted in U.S. Patent No. 8,204,437, indicating a shared specification and priority claim. No other prior litigation or administrative proceedings are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2008-08-08 | Priority Date for U.S. Patent No. 8,204,437 |
| 2008-08-08 | Priority Date for U.S. Patent No. 8,437,797 |
| 2012-06-19 | Issue Date for U.S. Patent No. 8,204,437 |
| 2013-05-07 | Issue Date for U.S. Patent No. 8,437,797 |
| 2018-02-09 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,437,797 - Wireless Image Distribution System and Method (Issued May 7, 2013)
The Invention Explained
- Problem Addressed: The patent identifies the frustration and difficulty individuals face when trying to share digital photographs taken at a common event or location, such as a wedding or vacation. The process of manually emailing or uploading images to third-party services is described as often resulting in excessive delay or failure to share the images at all (’797 Patent, col. 1:45-65).
- The Patented Solution: The invention proposes an "image-capturing mobile device" that can receive photographic images, filter them based on a "transfer criteria," and transmit the filtered images to a second mobile device. Critically, the system allows the transfer criteria to be received from the second mobile device, enabling a user of the receiving device to control which images are transferred (’797 Patent, Abstract; col. 2:15-35).
- Technical Importance: The technology addresses the growing desire for instantaneous image sharing that accompanied the proliferation of camera-equipped mobile devices like smartphones and PDAs in the late 2000s (’797 Patent, col. 1:29-39).
Key Claims at a Glance
- The complaint asserts independent claim 6 and dependent claim 7 (Compl. ¶13).
- Independent Claim 6 requires:
- An image-capturing mobile device comprising a wireless receiver, a wireless transmitter, and a processor.
- The processor is configured to perform several steps:
- receiving a plurality of photographic images;
- filtering the plurality of photographic images using a transfer criteria;
- transmitting the filtered images to a second mobile device; and
- receiving the transfer criteria from the second mobile device.
U.S. Patent No. 8,204,437 - Wireless Image Distribution System and Method (Issued June 19, 2012)
The Invention Explained
- Problem Addressed: Like its continuation, the '437 Patent addresses the inefficiency of sharing digital photos among groups of people, such as friends or family, who are capturing images of the same subjects or scenery in a proximate location (’437 Patent, col. 1:41-48).
- The Patented Solution: The patent describes a system comprising a "capturing device" and a "receiving device" that can establish a communicative relationship over a wireless network. The devices are brought into a "selectively paired relationship" based on "pre-defined pairing criteria," one of which is the "geographic location" of the capturing device. This pairing allows for automated or selective image distribution between the devices (’437 Patent, Abstract; col. 6:65-col. 7:7).
- Technical Importance: The invention provides a framework for creating ad-hoc, location-aware networks for sharing media, a concept relevant to social events, tourism, and other group activities.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶30).
- Independent Claim 1 requires:
- A system with at least one capturing device and at least one receiving device.
- The devices are disposable in a communicative relation via a wireless network.
- The capturing device has a capture assembly and a first network component; the receiving device has a second network component.
- The devices are disposed in a "selectively paired relationship."
- The pairing is based on the devices being associated with a common "pre-defined pairing criteria."
- The "pre-defined pairing criteria comprises a geographic location of said capturing device."
III. The Accused Instrumentality
Product Identification
- The Autel Robotics X-Star drone ("Product") and the associated Starlink mobile application (Compl. ¶14, ¶31).
Functionality and Market Context
- The complaint describes the accused instrumentality as a system where the X-Star drone acts as an image-capturing mobile device and a user's smartphone running the Starlink app acts as a second mobile or receiving device (Compl. ¶15, ¶33). The drone is equipped with a 4K camera and Wi-Fi capability, allowing it to communicate with the smartphone (Compl. ¶15). A screenshot provided in the complaint shows the Starlink app interface, which displays a live video feed from the drone and includes a camera icon for capturing still images (Compl. ¶18, p. 8). The system functions by establishing a Wi-Fi connection between the drone and the smartphone, enabling the user to control the drone, view the live feed, and capture images or video via the app (Compl. ¶34, ¶38).
- The complaint characterizes the X-Star as a "sophisticated yet amazingly easy-to-fly quadcopter, designed for superb aerial imagery" (Compl. ¶15, p. 3).
IV. Analysis of Infringement Allegations
’797 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An image-capturing mobile device, comprising a wireless receiver; a wireless transmitter; | The Autel X-Star drone, which is described as a mobile device with a camera and Wi-Fi receiver and transmitter. | ¶15 | col. 11:45-51 |
| and a processor operably connected to the wireless receiver and the wireless transmitter… | The drone's main processor, which is housed in the central body and connected to the Wi-Fi module to control communications and image capture. A diagram shows the location of processors and main boards (Compl. p. 5). | ¶16 | col. 11:45-51 |
| receiving a plurality of photographic images; | The drone's camera assembly captures digital images and video, which constitute a plurality of photographic images (e.g., frames in a video stream). | ¶17 | col. 11:51-56 |
| filtering the plurality of photographic images using a transfer criteria; | The complaint alleges that when a user selects to capture a particular image frame as a still/snapshot from the live stream via the Starlink App, this action constitutes "filtering" the images using a "transfer criterion." | ¶18 | col. 12:1-4 |
| transmitting, via the wireless transmitter and to a second mobile device, the filtered plurality of photographic images; | The drone transmits the selected snapshot images to the user's smartphone running the Starlink app via its Wi-Fi module. | ¶19 | col. 12:4-9 |
| and receiving, via the wireless receiver and from the second mobile device, the transfer criteria. | The drone's processor receives the command from the smartphone to capture a still/snapshot. The complaint alleges this user selection, transmitted from the phone to the drone, constitutes the "transfer criteria." A screenshot shows the app's camera button (Compl. p. 12). | ¶20 | col. 12:10-14 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether a user's manual command to capture a single still image from a live video stream meets the claim limitation of "filtering the plurality of photographic images using a transfer criteria." The dispute may focus on whether "filtering" requires an automated, rule-based process rather than a one-off manual selection.
- Technical Questions: What evidence demonstrates that the user's command from the smartphone is a "transfer criteria" as understood in the patent, versus simply being a remote shutter command?
’437 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system to distribute... comprising at least one capturing device and at least one receiving device, | The system is the Autel drone (capturing device) and a smartphone with the Starlink app (receiving device). | ¶31-33 | col. 11:39-44 |
| said capturing device and said receiving device being cooperatively disposable in a communicative relation with one another via at least one wireless network, | The drone and smartphone are connected and communicate over a Wi-Fi network, allowing for live streaming and image transfer. | ¶34 | col. 11:20-24 |
| said at least one capturing device comprising a capture assembly... structured to selectively capture the at least one digital photographic image, | The drone includes a camera assembly capable of capturing digital images, video, and still frames from video. | ¶35 | col. 11:51-56 |
| said capturing device further comprising a first network component... said receiving device comprising a second network component... | The drone has a Wi-Fi module (first network component) and the smartphone has a Wi-Fi module (second network component) to facilitate communication over the Wi-Fi network. | ¶36-37 | col. 11:5-15, 60-65 |
| wherein said capturing device and said receiving device are disposed in a selectively paired relationship with one another... at least partially based on... pre-defined pairing criteria, | The complaint alleges that the connection of the two devices over the same Wi-Fi network establishes the "selectively paired relationship." A screenshot shows the process of connecting the phone to the drone's Wi-Fi network (Compl. p. 14). | ¶38-39 | col. 12:65-col. 13:7 |
| and said pre-defined pairing criteria comprises a geographic location of said capturing device. | The complaint alleges this criterion is met because the drone must be physically located within the signal range of the smartphone's Wi-Fi network in order to pair. | ¶40 | col. 13:21-23 |
- Identified Points of Contention:
- Scope Questions: Does the inherent physical requirement for devices to be within Wi-Fi range to connect constitute a "pre-defined pairing criteria" that "comprises a geographic location," as claimed? Or does the patent require an explicit, software-defined locational rule (e.g., based on GPS coordinates or a named location)?
- Technical Questions: What evidence shows that the pairing process involves a "geographic location" as a "criterion," rather than proximity simply being a physical prerequisite for the radio-frequency communication to work?
V. Key Claim Terms for Construction
Term: "filtering the plurality of photographic images using a transfer criteria" (’797 Patent, Claim 6)
- Context and Importance: The plaintiff's infringement theory for the '797 patent hinges on equating a user's manual snapshot command with the "filtering" and "transfer criteria" limitations. The construction of this phrase will be decisive for determining whether the accused system's core function falls within the claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification is not explicitly limiting. It states that the invention may include "one or more transfer criteria disposed on the capturing device and/or receiving device" which may be structured to filter images via "object recognition, locational information, time, date, image name, etc." (’797 Patent, col. 2:32-35). A party could argue a user's real-time decision to capture a specific frame is a form of selective filtering.
- Evidence for a Narrower Interpretation: The specification discusses comparing images to the transfer criteria, suggesting a more automated, rule-based process: "If the image(s) 25 conforms to the transfer criteria 70... then the image(s) 25 is communicated to the receiving device 30" (’797 Patent, col. 10:5-10). This may suggest that a simple remote shutter command is not "filtering" based on a "criteria."
Term: "pre-defined pairing criteria comprises a geographic location of said capturing device" (’437 Patent, Claim 1)
- Context and Importance: The plaintiff’s infringement theory for the '437 patent rests on the argument that the physical necessity of being within Wi-Fi range satisfies this limitation. The viability of this theory depends entirely on whether this physical constraint can be legally construed as the claimed "pairing criteria."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that devices may be paired when "disposed in a predetermined and/or proximate relation to one another" (’437 Patent, col. 8:36-39). A party could argue that being within Wi-Fi range is a form of "proximate relation" that is inherently based on geographic location.
- Evidence for a Narrower Interpretation: The specification provides examples of pairing criteria that are explicitly defined, such as group names (e.g., "PANTHERS") or subject matter (e.g., "Empire State Building") (’437 Patent, FIGS. 5 & 7). Furthermore, the specification explicitly discusses using a "Global Positioning System ('GPS'), structured to encode the geographic location" as a data component of an image, which could suggest that the "geographic location" criterion requires more than just signal proximity (’437 Patent, col. 6:40-45).
VI. Other Allegations
- Indirect Infringement: The complaint does not contain separate counts for indirect infringement. However, it alleges that Defendant infringes by "making, using, importing, selling, and/or offering for" the accused products (Compl. ¶13). It further supports this by referencing Defendant's instructions and the functionality of the provided Starlink app, which together allegedly cause the end-user to perform the claimed methods (Compl. ¶15, ¶18, ¶34). These allegations could form the basis for a claim of induced infringement.
- Willful Infringement: The complaint does not explicitly plead willfulness or allege that Defendant had pre-suit knowledge of the patents. The prayer for relief includes a request for damages under 35 U.S.C. § 284, which allows for enhancement, but the factual predicate for willfulness is not developed in the complaint (Compl. p. 32). Any such claim would likely depend on Defendant's conduct after being served with the complaint.
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute appears to center on whether the broad language of the patents-in-suit can be read to cover the conventional operation of a modern drone-and-app system. The case will likely turn on the following key questions of claim scope and technical interpretation:
- A core issue will be one of definitional scope: Can the patent's requirement for a "pre-defined pairing criteria" based on "geographic location" (’437 Patent) be satisfied by the inherent physical constraint that the accused drone and smartphone must be within Wi-Fi range of each other to communicate, or does the claim require a more explicit, software-defined locational rule?
- A second key question will be one of functional interpretation: Does the user's action of manually taking a snapshot from a live video stream via the Starlink app constitute "filtering the plurality of photographic images using a transfer criteria" as contemplated by the ’797 Patent, or is there a fundamental mismatch between this manual user action and the more automated, rule-based process the patent appears to describe?