Pebble Tide LLC v. Walt Disney Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Pebble Tide LLC (Texas)
  • Defendant: The Walt Disney Company (Delaware)
  • Plaintiff’s Counsel: Stamoulis & Weinblatt LLC; Rabicoff Law LLC
• Case Identification: 1:19-cv-01176, D. Del., 06/23/2019
• Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is incorporated in Delaware and has an established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s PhotoPass and Memory Maker system infringes a patent related to a method for capturing digital content on one device, processing it on a remote server, and outputting it from a separate client device.
• Technical Context: The technology addresses the challenge of outputting content from resource-constrained mobile devices by offloading the processing-intensive task of generating device-specific output data (e.g., for a printer) to a network server.
• Key Procedural History: The patent-in-suit is a continuation of an application filed in 2001, granting it an early priority date. Subsequent to the filing of this complaint, the asserted patent was the subject of a Post-Grant Review (PGR) proceeding (PGR2020-00011). The resulting PGR Certificate, issued November 22, 2021, cancelled all independent and dependent claims asserted in this lawsuit.

Case Timeline

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

U.S. Patent No. 10,303,411 - Method for capturing, storing, accessing, and outputting digital content

(Compl. ¶¶7-8; ’411 Patent, p. 1).

The Invention Explained

• Problem Addressed: The patent describes the difficulty for users of early mobile devices (e.g., PDAs, digital cameras) to output digital content to peripherals like printers, especially when away from a home or office computer. (’411 Patent, col. 1:26-45). This was due to the need for device-specific drivers and the limited processing power and memory of the mobile devices themselves. (’411 Patent, col. 3:6-14, col. 3:44-54).
• The Patented Solution: The invention proposes a client-server architecture to solve this problem. An "information apparatus" with a digital camera captures content and sends it, along with a "device object" describing itself, to a network server. (’411 Patent, Fig. 1). A separate "client device" provides authentication to the server to access the stored content. (’411 Patent, Abstract). The server, rather than the mobile device, performs the heavy processing to generate device-specific "output data" and sends this data back to the client device, which then relays it to a local output device (e.g., a printer) for final rendering. (’411 Patent, col. 8:16-25, col. 17:26-34).
• Technical Importance: This architecture enabled "pervasive output," allowing resource-limited mobile devices to leverage powerful network servers to output rich content to a wide variety of output devices without needing pre-installed, device-specific drivers. (’411 Patent, col. 4:14-38).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 9. (Compl. ¶11).
• Independent Claim 1 recites a method comprising:
  • An "information apparatus" with a wireless module and a digital camera.
  • The apparatus establishes a wireless connection to a server over the Internet.
  • The apparatus transmits a "device object" to the server.
  • The apparatus captures digital content with its camera and provides it to the server.
  • Server software receives and stores the content.
  • The server then receives security/authentication information from a separate "client device."
  • Subsequent to authentication, the server generates "output data" and provides it to the client device for outputting.
• Independent Claim 9 recites a system comprising:
  • An "information apparatus" (a digital capturing device) that establishes a connection and transmits a device object and captured content to a server.
  • "Server software" that receives and stores the content.
  • "Client software" on a separate "client device."
  • The server receives "job objects" (containing security information) from the client device, retrieves the stored content, generates output data, and provides the output data to the client device for output.
• The complaint also asserts dependent claims 2-6, 9-10, 13-14, and 17-18. (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

Walt Disney's PhotoPass and Memory Maker system. (Compl. ¶11).

Functionality and Market Context

The complaint does not provide a technical description of the operation of the PhotoPass and Memory Maker system, nor does it contain allegations regarding the products' commercial importance or market positioning. (Compl. ¶11).

IV. Analysis of Infringement Allegations

The complaint states that "Exhibit 2 includes charts comparing the Exemplary ’411 Patent Claims to the Exemplary Walt Disney Products" and that these charts demonstrate infringement. (Compl. ¶16). This exhibit was not filed with the complaint. In the absence of a claim chart, the infringement theory is based on the narrative allegations.

Plaintiff alleges that Defendant directly infringes, induces infringement of, and contributes to the infringement of one or more claims of the ’411 Patent by making, using, and selling the PhotoPass and Memory Maker system. (Compl. ¶¶11, 14, 15). The complaint alleges inducement is based on Defendant's distribution of "product literature and website materials" that instruct users on an infringing use. (Compl. ¶13). No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Architectural Questions: The claims require a specific three-part architecture: (1) an "information apparatus" that captures content, (2) a "server" that processes it, and (3) a separate "client device" that authenticates and receives the processed data for output. A central dispute may be whether the PhotoPass system, which appears to involve a photographer's camera (capturing device) and a park guest's smartphone (access device), can be mapped onto the claim's specific architecture. For instance, does the photographer's camera itself establish a wireless connection and send a "device object" to a server as required by Claim 1?
  • Scope Questions: A key question for the court is how the various components of the accused system relate to the claimed elements. For example, does the guest's smartphone function as the claimed "client device" that is "separate and distinct" from the "information apparatus" (the camera), and does the interaction between them follow the precise sequence of steps recited in the claims?
  • Technical Questions: A factual dispute may arise over the nature of the data transferred. The patent distinguishes between original "digital content" and processed "output data." A question will be whether the Disney server provides the original photo file (e.g., a JPEG) to the guest's phone, or if it generates and transmits device-specific "output data" that has been processed for a particular final output device, as the patent specification describes.

V. Key Claim Terms for Construction

• The Term: "information apparatus"
  • Context and Importance: This term defines the device that performs the initial content capture and transmission. The infringement analysis will turn on whether this term can be construed to read on the devices used in the accused system, and whether a single apparatus performs all the functions required by the claims.
  • Evidence for a Broader Interpretation: The specification defines the term broadly to include "both stationary computers and mobile computing devices," providing a long list of examples including digital cameras, laptops, and mobile phones. (’411 Patent, col. 1:26-36).
  • Evidence for a Narrower Interpretation: Claim 1 requires the "information apparatus" to include both "a digital camera" and "at least one wireless communication module." (’411 Patent, col. 35:56-61). This could support an argument that the term is limited to a single, integrated device possessing both features, as opposed to a system where these functions are split between a camera and a separate communication device.
• The Term: "output data"
  • Context and Importance: The claims require the server to "generate output data" and transmit it to the client device. The viability of the infringement claim may depend on whether the data sent by the accused server constitutes "output data" under the correct construction of the term.
  • Evidence for a Broader Interpretation: A party could argue the term should be given its plain meaning, covering any data that is sent from the server for the purpose of being output.
  • Evidence for a Narrower Interpretation: The specification consistently treats "output data" as the processed, device-dependent result of converting the original "digital document." It is described as being in a "specific output device's input space" and may include "printer specific input format." (’411 Patent, col. 1:33-46). This suggests "output data" is distinct from the original, unprocessed content file.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant induces infringement by distributing "product literature and website materials" that instruct end users to use the products in a manner that infringes the ’411 Patent. (Compl. ¶13). It also makes a conclusory allegation of contributory infringement. (Compl. ¶15).
• Willful Infringement: The basis for willfulness is alleged post-suit knowledge. The complaint asserts that its filing "constitutes notice and actual knowledge" and that Defendant's continued infringement is therefore willful. (Compl. ¶¶12-13).

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

• A threshold, and likely dispositive, legal question is the viability of the lawsuit itself. The complaint was filed in June 2019, but a Post-Grant Review Certificate issued in November 2021 cancelled or disclaimed every patent claim asserted in the complaint. The court must determine the legal effect of this post-filing invalidation on the pending action for infringement.
• Should the case proceed, a core issue will be one of architectural mapping: can the distinct components of the accused PhotoPass system (e.g., a photographer's camera, a guest's smartphone, a server) be shown to meet the specific structural and sequential limitations of the claimed three-part system, particularly the definitions of the "information apparatus" and the separate "client device"?
• A key evidentiary question will be one of functional distinction: does the accused Disney server merely act as a repository that serves original photo files upon request, or does it perform the inventive work of "generating" and transmitting device-specific "output data" tailored for a final output device, as required by a plausible construction of the claims?