DCT

1:19-cv-02166

Pogotec Inc v. Opkix Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-02166, D. Del., 11/20/2019
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because both Defendants are Delaware corporations and are therefore deemed to reside in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s wearable camera systems and related accessories infringe four U.S. patents concerning the design, functionality, and magnetic attachment mechanisms of such devices.
  • Technical Context: The technology relates to the field of ultra-compact, wearable point-of-view cameras, a market segment focused on unobtrusively capturing photos and videos from a user's perspective.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant Opkix with written notice of infringement for all four asserted patents prior to filing the lawsuit, which may form the basis for allegations of willful infringement.

Case Timeline

Date Event
2014-08-03 U.S. Patent No. 10,185,163 Priority Date
2014-12-23 U.S. Patent No. 9,930,257 Priority Date
2014-12-23 U.S. Patent No. 10,348,965 Priority Date
2015-06-10 U.S. Patent No. 10,481,417 Priority Date
2018-03-27 U.S. Patent No. 9,930,257 Issued
2019-01-22 U.S. Patent No. 10,185,163 Issued
2019-06-06 PogoTec provides Opkix notice of ’257 and ’163 Patents
2019-07-09 U.S. Patent No. 10,348,965 Issued
2019-08-26 PogoTec provides Opkix notice of ’965 and ’417 Patents
2019-11-19 U.S. Patent No. 10,481,417 Issued
2019-11-20 Complaint Filed

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

U.S. Patent No. 9,930,257 - "Wearable Camera System"

  • Patent Identification: U.S. Patent No. 9,930,257, "Wearable Camera System," issued March 27, 2018.
  • The Invention Explained:
    • Problem Addressed: The patent describes challenges with prior art wearable cameras, such as their bulkiness, obtrusive appearance, and the need for a constant connection to a power or data source, which limits user mobility and convenience (’257 Patent, col. 1:21-41).
    • The Patented Solution: The invention is a complete system comprising a small, self-contained wearable camera and a separate, portable charging unit. The camera can capture and store images without being physically connected to the charging unit, and the charging unit can recharge the camera's battery without itself being connected to an external power source, enabling on-the-go use and recharging (’257 Patent, col. 2:1-12; Abstract).
    • Technical Importance: This system architecture allows for a significantly smaller and lighter camera module, as the main battery and data processing components can be housed in the separate mobile unit, making the camera itself more practical for attachment to fashion-sensitive items like eyewear (’257 Patent, col. 1:42-53).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 and a range of dependent claims (Compl. ¶27).
    • Independent Claim 1 of the ’257 Patent requires:
      • A wearable camera system including a wearable camera and a mobile charging unit.
      • The camera body has a width or height smaller than its length and is devoid of a viewfinder.
      • The camera body contains its own power, memory, and control for capturing and storing an image independently of the mobile charging unit.
      • The camera body has a trigger for initiating image capture.
      • The camera is attachable to an eyewear temple.
      • The mobile charging unit is not attached to the eyewear temple and is configured to recharge the camera while the unit is not connected to an external power source.

U.S. Patent No. 10,185,163 - "Wearable Camera Systems and Apparatus and Method for Attaching Camera Systems or Other Electronic Devices to Wearable Articles"

  • Patent Identification: U.S. Patent No. 10,185,163, "Wearable Camera Systems and Apparatus and Method for Attaching Camera Systems or Other Electronic Devices to Wearable Articles," issued January 22, 2019.
  • The Invention Explained:
    • Problem Addressed: The patent notes that attaching conventional cameras to eyewear can be aesthetically unpleasing and detract from the "fashion-look" of the glasses (’163 Patent, col. 2:2-6).
    • The Patented Solution: The invention proposes a wearable camera that is specifically designed for unobtrusive use. The patent describes a small, lightweight camera body that is devoid of a viewfinder and an illuminating flash, but includes a subtle indicator light to signal image capture. A key aspect is its versatility, being "attachable to and detachable from a plurality of different items including a temple of an eyewear" (’163 Patent, Abstract; col. 29:27-29).
    • Technical Importance: This design philosophy prioritizes miniaturization and versatility, allowing a single camera device to be used with various mounting accessories beyond just eyewear, broadening its utility for point-of-view capture (’163 Patent, col. 2:10-13).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 and a range of dependent claims (Compl. ¶44).
    • Independent Claim 1 of the ’163 Patent requires:
      • A wearable camera system with a camera configured to be coupled to a remote device.
      • The camera body has a width or height smaller than its length.
      • The camera body is devoid of a viewfinder and can capture an image without reliance on an external component.
      • The camera includes a signaling light but is devoid of a flash capable of illuminating the subject.
      • The camera is attachable to and detachable from a plurality of different items, including an eyewear temple.
      • The camera body has a volume of 9,450 cubic mm or less, or weighs 10 grams or less.

U.S. Patent No. 10,348,965 - "Wearable Camera System"

  • Patent Identification: U.S. Patent No. 10,348,965, "Wearable Camera System," issued July 9, 2019 (Compl. ¶20).
  • Technology Synopsis: This patent describes a wearable camera system similar to the ’257 Patent, comprising a camera and a separate mobile charging unit. The claims focus on specific functionalities, including a "privacy indicator" on the camera to alert observers to image capture, and the mobile unit's capability to download and "alter the image" before transmitting it to another device, suggesting on-board processing capabilities (’965 Patent, Abstract; col. 27:12-30).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶62).
  • Accused Features: The complaint alleges that the OPKIX ONE camera's "Halo record light" functions as the claimed privacy indicator and that its charging "Egg" downloads and performs "video processing," which is alleged to be the claimed image alteration (Compl. ¶66, ¶69).

U.S. Patent No. 10,481,417 - "Magnetic Attachment Mechanism for Electronic Wearable Device"

  • Patent Identification: U.S. Patent No. 10,481,417, "Magnetic Attachment Mechanism for Electronic Wearable Device," issued November 19, 2019 (Compl. ¶22).
  • Technology Synopsis: This patent is directed to the specific mechanism for magnetically attaching a wearable device to an eyewear temple. The invention claims an attachment where the device can be moved to different positions along the temple while remaining attached. A key limitation is that the first magnet (on the device) and the second magnet or ferromagnetic material (on the temple) do not physically contact each other, implying they are embedded or separated by a non-magnetic housing (’417 Patent, Abstract; col. 1:5-11).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶80).
  • Accused Features: The magnetic mounting system of the "OPKIX ONE Camera" and "OPKIX REC Eyewear" are accused of infringing by providing a movable attachment where the magnetic components are allegedly housed within the respective plastic bodies and do not make direct contact (Compl. ¶82-84).

III. The Accused Instrumentality

Product Identification

  • The accused products are Defendant Opkix's line of wearable camera systems and accessories, primarily the "OPKIX ONE" and "OPKIX ONE Camera" (Compl. ¶1). Associated accessories named include "OPKIX REC Eyewear," "OPKIX PLAY Eyewear," "OPKIX Ring," "OPKIX Hat with magnetic camera mount," and "OPKIX selfie mount" (Compl. ¶1).

Functionality and Market Context

  • The Accused Products comprise a system of small, modular video cameras that can be magnetically attached to various items, including specially designed eyewear (Compl. ¶33, ¶50). The cameras are self-powered and contain internal memory for recording footage (Compl. ¶31). After recording, the cameras are placed into a portable, egg-shaped charging case (the "Egg"), which serves as a "powerful microcomputer that seamlessly transfers data" to a user's device while also recharging the cameras (Compl. ¶29). A product description for the OPKIX REC Eyewear explicitly states it has "Dual Magnetic Temples Compatible With Opkix One Camera" (Compl. p. 10, image 8). The complaint presents the Accused Products as operating in the same market for unobtrusive, wearable cameras as Plaintiff's own PogoCam product (Compl. ¶12-13, ¶24). The system's functionality is depicted in a product image showing the camera, the Egg charging case, and a smartphone interface (Compl. p. 7, image 3).

IV. Analysis of Infringement Allegations

’257 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A wearable camera system, wherein the wearable camera system includes a wearable camera and a mobile charging unit. The "OPKIX ONE" system includes the OPKIX ONE Camera and the "Egg" mobile charging and data transfer unit. ¶29 col. 14:48-50
wherein the camera has a camera body having a width or height that is smaller than a length of the camera body, wherein the camera body is devoid of a viewfinder. The OPKIX ONE Camera has dimensions of 14.2 mm x 14.2 mm (width/height) by 36 mm (length) and lacks a viewfinder. A product diagram illustrates these dimensions (Compl. p. 7, image 4). ¶30 col. 14:51-54
and wherein the camera body comprises on board power, memory and control for capture and storing an image without being connected to the mobile charging unit. The OPKIX ONE Camera can record for 12 minutes when charged, hold power for 60 hours, and store 4 gigs of footage, all while operating independently of the Egg. ¶31 col. 14:55-58
wherein the camera body comprises a trigger configured to initiate image capture. The camera includes a "Record Button" used to start and stop recording. A product diagram shows the location of this button (Compl. p. 9, image 7). ¶32 col. 14:59-60
wherein the wearable camera is attachable to an eyewear temple. The OPKIX ONE Camera is compatible with and attaches to OPKIX REC and PLAY Eyewear, which have "Dual Magnetic Temples." ¶33 col. 14:61-62
wherein the mobile charging unit is not attached to the eyewear temple and...is configured to recharge the wearable camera while the mobile charging unit is not connected to an external power source. The Egg is a separate unit from the eyewear and is designed to recharge a single camera unit four times on a full charge of its own internal battery. ¶34 col. 14:63-67
  • Identified Points of Contention:
    • Scope Questions: The infringement theory appears to map the elements of the system claim to distinct components of the accused system. A potential area for dispute could revolve around whether the term "attachable to an eyewear temple" is met by a system that requires proprietary eyewear with special magnetic features, versus a camera that can attach to any standard eyewear temple.
    • Technical Questions: The complaint's allegations rely on Defendant's marketing materials and product specifications. A factual question for the court will be whether the accused products, in actual operation, perform each claimed function as alleged, such as the Egg's ability to provide multiple recharges without connection to an external power source.

’163 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A wearable camera system, wherein the wearable camera system includes a wearable camera configured to be coupled to a remote device. The OPKIX ONE Camera is part of a system that couples with the Egg and a user's smartphone, which act as remote devices for data transfer and charging. ¶46 col. 29:10-12
wherein the camera has a camera body having a width or a height that is smaller than a length of the camera body... The OPKIX ONE Camera has a length of 36 mm and a width/height of 14.2 mm, satisfying the dimensional requirement. ¶47 col. 29:13-18
wherein the camera body is devoid of a view finder and is configured to capture an image without reliance on any external component. The camera operates as a standalone recording device with a record button and lacks any integrated screen or viewfinder. ¶48 col. 29:19-21
wherein the camera comprises a light for signaling an individual whose image is being captured but is otherwise devoid of a flash capable of illuminating the individual... The OPKIX camera has a "Halo record light" and LED indicator lights around the lens to signal recording, but does not have an illuminating flash. ¶49, ¶50 col. 29:22-26
wherein the wearable camera is attachable to and detachable from a plurality of different items including a temple of an eyewear. The OPKIX ONE camera is sold with and marketed for attachment to eyewear, a ring, a hat with a magnetic mount, and a selfie mount. A product image shows the camera attached to a finger ring accessory (Compl. p. 22, image 22). ¶50 col. 29:27-29
wherein the camera body has a volume of 9,450 cubic mm or less or weighs 10 grams or less. The camera's dimensions (14.2 x 14.2 x 36 mm) result in a volume of approximately 7,258 cubic mm, which is less than the claimed 9,450 cubic mm. ¶51 col. 29:30-31
  • Identified Points of Contention:
    • Scope Questions: A central question may be the construction of "a plurality of different items." The complaint points to various accessories sold by Opkix. A dispute could arise over whether the claim requires attachment to a broad category of pre-existing, unmodified items, versus attachment to a proprietary ecosystem of accessories specifically designed for the camera.
    • Technical Questions: Claim 1(d) requires a signaling light but the absence of a "flash capable of illuminating the individual." A factual question for the court will be whether the accused camera's "LED indicator lights around the front of the lens" are technically incapable of providing any illumination that contributes to the captured image, or if they are merely intended for signaling but have a minor, incidental illuminating effect.

V. Key Claim Terms for Construction

  • The Term: "mobile charging unit" (’257 Patent, Claim 1)

  • Context and Importance: This term defines a critical component of the two-part system. The scope of this term will determine what types of portable accessories fall within the claim, particularly regarding the requirement that it can recharge the camera while "not connected to an external power source."

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself is functional, suggesting any portable unit with an internal battery that can recharge the camera could qualify (’257 Patent, col. 14:65-67).
    • Evidence for a Narrower Interpretation: The specification describes the mobile charging unit as potentially being part of a "smart case" that can also manage data transfer and communication (’257 Patent, col. 10:1-12). A defendant may argue this context limits the term to devices that perform more than just charging.

  • The Term: "attachable to and detachable from a plurality of different items" (’163 Patent, Claim 1)

  • Context and Importance: The breadth of this term is key to the infringement analysis for the ’163 Patent. It defines the required versatility of the camera's attachment mechanism. Practitioners may focus on whether this requires universal compatibility or is satisfied by a proprietary ecosystem of accessories.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent's background discusses attaching devices to "eyewear or other wearable articles," suggesting a broad scope of intended targets (’163 Patent, col. 2:12-13). The claim's use of "including a temple of an eyewear" suggests eyewear is just one example among many possibilities.
    • Evidence for a Narrower Interpretation: Many embodiments in the patent focus heavily on specific mechanical guide rails and grooves integrated into eyewear temples (’163 Patent, Figs. 1-3; col. 3:9-11). A defendant could argue that "attachable" implies a secure, mechanical connection of the type shown in the embodiments, not merely a magnetic attraction to any compatible surface.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement against both Defendants. The allegations are based on Defendants providing "manuals and support to resellers and end-user customers regarding the use and operation of the Accused Products," which allegedly instruct users to operate the products in an infringing manner (Compl. ¶38, ¶55, ¶73, ¶88).
  • Willful Infringement: Willfulness is alleged against Defendant Opkix for all four patents based on pre-suit knowledge via written correspondence dated June 6, 2019, and August 26, 2019 (Compl. ¶35, ¶52, ¶70, ¶85). For Defendant B8TA, knowledge is alleged "since the filing of this complaint" (Compl. ¶36, ¶53, ¶71, ¶86).

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

  • A central issue will be one of system definition: does the accused OPKIX product line, sold as an ecosystem of cameras and various purpose-built mounts (eyewear, rings, hats), constitute the specific "wearable camera system" claimed in the patents, which describe particular architectures like a camera paired with a non-wearable "mobile charging unit"?
  • A key question of claim scope will be whether terms like "attachable to an eyewear temple" and "attachable to...a plurality of different items" can be broadly construed to cover a camera that attaches via magnets to proprietary accessories, or if the patent's detailed descriptions of integrated mechanical guides limit the claims to such specific implementations.
  • An evidentiary question will be one of functional operation: the case will likely require factual determinations of whether the accused products perform the specific functions recited in the claims, such as whether the "Egg" charging case "alter[s] the image" captured by the camera, and whether the magnetic components of the camera and eyewear "do not contact a surface" of each other during use, as claimed in the ’965 and ’417 patents, respectively.