DCT
1:19-cv-01237
Computing Resource Technology LLC v. Forbidden Tech Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Computing Resource Technology LLC (Delaware)
- Defendant: Forbidden Technologies Inc. (Delaware)
- Plaintiff’s Counsel: STAMOULIS & WEINBLATT LLC
- Case Identification: 1:19-cv-01237, D. Del., 06/28/2019
- Venue Allegations: Venue is alleged based on Defendant conducting substantial business, soliciting business, and deriving substantial revenue from goods and services provided to individuals within the District of Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s Blackbird cloud-based video editing platform infringes a patent related to methods for allowing a security-restricted, client-side program to utilize remote server resources to modify data and generate a locally storable file.
- Technical Context: The technology addresses a fundamental security challenge in early web applications, where client-side programs (like Java applets) were prevented from accessing the local file system, thus making it difficult for users to save their work.
- Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 1998-10-13 | U.S. Patent No. 8,255,805 Priority Date |
| 2012-08-28 | U.S. Patent No. 8,255,805 Issue Date |
| 2018-03-01 | Forbidden Technologies rebrands Forscene as Blackbird |
| 2019-06-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,255,805 - "System and Method for Permitting a Software Routine Having Restricted Local Access to Utilize Remote Resources to Generate Locally Usable Data Structure," issued August 28, 2012.
The Invention Explained
- Problem Addressed: The patent addresses the security limitations of software routines like Java applets that execute on a local computer after being downloaded from a remote server. These applets operate within a "sand box" environment that, for security, prohibits them from reading from or writing to the user's local file system. This restriction prevents users from saving or printing any modifications they make within the applet, such as annotating a chart or editing a document (’805 Patent, col. 2:20-34, 2:60-66).
- The Patented Solution: The invention provides a multi-step workaround. A user modifies data (e.g., a multimedia file) within the restricted applet on their local machine. When the user signals to save the work, the applet transmits the modified data back to the remote server where it is stored as a new file, often in a standard, browser-compatible format like a GIF image ('805 Patent, Abstract; col. 10:49-55). The system can then provide the local user with access to this new file (e.g., by opening a new browser window pointing to the file's URL), which allows the user to leverage the browser's unrestricted, native functions to save the file to their local computer ('805 Patent, col. 10:10-18).
- Technical Importance: This approach enabled early server-based applications to offer richer, interactive user experiences with data persistence, while still adhering to the "sand box" security model that was critical for user trust on the early web ('805 Patent, col. 10:36-44).
Key Claims at a Glance
- The complaint asserts independent claim 3 of the '805 patent (Compl. ¶10).
- The essential elements of independent claim 3 are:
- Receiving an initial multimedia file (comprising audio or video) at a local computer from a remote computer system.
- Receiving modifications to the initial file via a program (comprising a Java-based applet) on the local computer, where that program is unable to store the resulting modified file on the local computer's file systems due to restrictions.
- In response to a user signal to store, transmitting the modified multimedia file to the remote computer.
- After transmission, downloading the modified multimedia file to the local computer for use by a "second program different from the program executing on the local computer," which results in the local computer storing the file.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant's Blackbird cloud video platform, which the complaint notes incorporates the Forscene platform (Compl. ¶10, p. 3).
Functionality and Market Context
- Blackbird is described as a cloud-based, "Software as a Service (SaaS)" video editing platform that allows professional users to perform logging, review, and editing of video content stored in the cloud (Compl. p. 4).
- The system operates through a web browser, with a front-end application that runs on the user's local machine (Compl. p. 6, ¶13). The complaint alleges this front-end is a "Java-based applet" and that it runs in the local machine's RAM but is restricted from storing information on the local hard drive (Compl. p. 9, ¶14).
- A key visual in the complaint is a diagram from the user manual illustrating the user interface, which is composed of a "Play Window," "Record Window," and "Files Window" for managing video assets (Compl. p. 8).
- Users make edits which are saved to the cloud (Compl. p. 9). The platform then allows for the export of an "Edit Decision List" (EDL) file, which can be downloaded to the user's local computer and imported into other professional editing software, such as Final Cut Pro (Compl. ¶16, p. 16).
IV. Analysis of Infringement Allegations
’805 Patent Infringement Allegations
| Claim Element (from Independent Claim 3) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving an initial multimedia file at a local computer from a remote computer system, the initial multimedia file comprising at least audio or video; | The Blackbird platform receives an initial multimedia file containing audio or video at the user's local computer from a remote computer system. | ¶12 | col. 11:63-65 |
| receiving modifications to the initial multimedia file at the local computer to create a modified multimedia file with a program comprising a Java-based applet and executing on the local computer, such that the program is unable to store the modified multimedia file in file systems of the local computer due to restrictions; | Blackbird receives user modifications via a "Java-based applet" running on the local computer. The complaint includes a screenshot of a Java security prompt to support this allegation. This program is allegedly unable to store files locally. | ¶13-14, p. 13 | col. 11:36-43 |
| in response to receiving a user signal to store the modified multimedia file: transmitting the modified multimedia file to the remote computer, and | In response to a user saving a sequence, Blackbird transmits the modified file to the remote computer. The complaint references user manual instructions for saving sequences by dragging an icon. | ¶15, p. 14 | col. 12:13-15 |
| after transmitting the modified multimedia file, downloading the modified multimedia file to the local computer from the remote computer system for use by a second program different from the program executing on the local computer... | After transmission, the user can download the modified work as an EDL file for use in a separate, "second program" like Final Cut Pro, which stores the EDL file on the local computer. | ¶16 | col. 12:15-21 |
- Identified Points of Contention:
- Scope Questions: A central question may be the interpretation of a "second program different from the program executing on the local computer." The patent's embodiment describes using the browser itself to save the file ('805 Patent, col. 10:10-18), whereas the complaint alleges the "second program" is a completely separate application like Final Cut Pro that imports a downloaded EDL file (Compl. ¶16). The court may need to determine if the claim scope covers this alleged implementation.
- Technical Questions: Does the downloaded "modified multimedia file," which the complaint identifies as an EDL file (a text-based list of edit instructions), meet the claim requirement of being a "multimedia file comprising at least audio or video"? (Compl. ¶16). The dispute may turn on whether a data file describing video edits is equivalent to a file comprising video.
V. Key Claim Terms for Construction
The Term: "program comprising a Java-based applet"
- Context and Importance: This term is central to defining the nature of the restricted client-side software. The infringement case rests on the accused Blackbird front-end falling within this definition. The patent's priority date (1998) suggests a specific meaning for "applet" common at that time. Practitioners may focus on this term because the accused product, while using Java (Compl. p. 13), might be argued to be a more modern technology (e.g., Java Web Start) that is technically distinct from a classic "applet."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent repeatedly refers to the program being "restricted from accessing file systems on the local computer" ('805 Patent, col. 11:40-42). A party could argue that any Java-based program executing in a browser with such security restrictions functionally constitutes a "Java-based applet" for the purposes of the invention, regardless of its specific technical label.
- Evidence for a Narrower Interpretation: The specification consistently uses the term "applet" in the context of a program "designed to interoperate with graphical user interfaces such as the conventional browsers" ('805 Patent, col. 2:5-9). A party could argue this implies the specific, now-deprecated
<applet>tag technology and not other forms of browser-based Java execution.
The Term: "second program different from the program executing on the local computer"
- Context and Importance: The definition of this term is critical for the final step of the claimed method. The Plaintiff's theory requires that a third-party application like Final Cut Pro qualifies as this "second program."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, not specifying the nature of the "second program" other than it being "different" and capable of using the downloaded file. This could support an interpretation that includes any separate application on the local computer.
- Evidence for a Narrower Interpretation: The detailed description suggests the "second program" is the browser itself, operating in its native, unrestricted mode to save the file. The patent states the user can perform an operation "since the browser has access to the local system resources" ('805 Patent, Abstract) and that the "browser program can thereafter transfer such modified file to an output and/or storage device" ('805 Patent, col. 5:14-17). This suggests a more integrated process than manually exporting a file for use in an unrelated application.
VI. Other Allegations
- Indirect Infringement: The prayer for relief requests a judgment that Defendant has induced infringement (Compl. p. 18). The factual basis for this appears to stem from allegations that Defendant provides a user manual and tutorials that instruct users on how to operate the Blackbird system in an infringing manner, such as by saving and exporting edited video sequences (Compl. pp. 4, 14, 17).
- Willful Infringement: The complaint does not contain a specific count for willful infringement or allege pre-suit knowledge of the patent. However, the prayer for relief requests a "declaration that this case is exceptional under 35 U.S.C. § 285, and an award of... reasonable attorneys' fees," which is the statutory remedy for such findings (Compl. p. 19).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may hinge on several key interpretive questions for the court:
- A core issue will be one of definitional scope: Can the term "second program", as used in the patent, be construed to cover a distinct, third-party software application (e.g., Final Cut Pro) that a user manually employs, or does the claim require a more integrated process where the browser itself acts as the "second program" to save the file, as described in the patent's preferred embodiment?
- A second key question will be one of technical identity: Does an "Edit Decision List" (EDL) file—a text-based data file containing instructions for video edits—satisfy the claim limitation of a "multimedia file comprising at least audio or video", or is it merely metadata about a multimedia file, placing it outside the claim's scope?
- Finally, an evidentiary question may arise regarding functional operation: The case will likely require a detailed technical comparison between the patent's described process of converting a file to a standard format (like GIF) for transfer and the accused system's method of transmitting edit data and then providing a specialized file (EDL) for download.