DCT
1:20-cv-00263
Rothschild Patent Imaging LLC v. Avast Software Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Patent Imaging LLC (Texas)
- Defendant: Avast Software, Inc. (Delaware)
- Plaintiff’s Counsel: Chong Law Firm
- Case Identification: 1:20-cv-00263, D. Del., 02/23/2020
- Venue Allegations: Venue is asserted in the District of Delaware 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 MyRoll intelligent photo gallery application infringes a patent related to filtering and wirelessly distributing digital images between devices.
- Technical Context: The technology addresses the automated organization and sharing of digital photographs between electronic devices, a core feature in modern smartphone and cloud-based photo management ecosystems.
- Key Procedural History: The patent-in-suit is subject to a terminal disclaimer. Subsequent to the filing of this complaint, an ex parte reexamination of the patent was requested. On April 1, 2022, the USPTO issued a Reexamination Certificate which cancelled all claims of the patent, including the single claim asserted in this litigation. The cancellation of the asserted claim presents a significant and potentially dispositive issue for the continuation of the case.
Case Timeline
| Date | Event |
|---|---|
| 2008-08-08 | '086 Patent Priority Date |
| 2018-04-03 | '086 Patent Issue Date |
| 2020-02-23 | Complaint Filing Date |
| 2020-10-20 | Reexamination of '086 Patent Requested |
| 2022-04-01 | Reexamination Certificate Cancelling All Claims Issued |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,936,086, “Wireless Image Distribution System and Method,” issued April 3, 2018.
- The Invention Explained:
- Problem Addressed: The patent’s background section describes the logistical challenges and "frustration and aggravation" associated with manually sharing digital photos among groups of people who capture images at the same event, such as a wedding or party. It notes that methods like email or uploading to web services are often inefficient and incomplete ('086 Patent, col. 2:4-27).
- The Patented Solution: The invention proposes a system where a "capturing device" (e.g., a digital camera) and one or more "receiving devices" can establish a communicative link over a wireless network to automatically or selectively share images ('086 Patent, Abstract). A key aspect of the solution is the ability to filter images based on "pre-defined transfer criteria" before they are transmitted, allowing for the selective distribution of images based on factors like "object recognition, locational information, time, date, image name, etc." ('086 Patent, col. 2:62-67).
- Technical Importance: The technology aimed to streamline the process of photo sharing by automating the distribution of relevant images between devices that are proximately located or part of a defined group, reducing the manual effort required by users ('086 Patent, col. 2:28-35).
- Key Claims at a Glance:
- The complaint asserts infringement of "at least Claim 4" of the '086 Patent (Compl. ¶13).
- Independent Claim 4 is a method claim comprising the following essential elements:
- receiving a plurality of photographic images;
- filtering the plurality of photographic images using a transfer criteria wherein the transfer criteria is a subject identification of a respective photographic image within the plurality of photographic images, wherein the subject identification is based on a topic, theme or individual shown in the respective photographic image;
- and transmitting, via a wireless transmitter and to a second image capturing device, the filtered plurality of photographic images.
- The complaint’s use of "at least" suggests the right to assert other claims may be reserved (Compl. ¶13).
III. The Accused Instrumentality
- Product Identification: The accused instrumentality is the "MyRoll intelligent photo gallery platform and app, and any similar products" (“the Product”) (Compl. ¶14).
- Functionality and Market Context: The complaint alleges the Product is an "intelligent photo gallery" that organizes photos on a user's device (Compl. ¶15). The accused functionality includes importing images from a mobile device's camera, automatically sorting the photos by criteria such as "location, date, time, etc.," and sharing sorted groups of photos with other devices or social networks (Compl. ¶16-18). The complaint provides a screenshot describing the MyRoll app's ability to "[a]utomatically organize all of your photos and videos according to your events, date, time, and location" (Compl. p. 5).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,936,086 Infringement Allegations
| Claim Element (from Independent Claim 4) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a plurality of photographic images; | The Product imports images from a mobile device that has a camera. | ¶16 | col. 14:23-24 |
| filtering the plurality of photographic images using a transfer criteria wherein the transfer criteria is a subject identification of a respective photographic image within the plurality of photographic images, wherein the subject identification is based on a topic, theme or individual shown in the respective photographic image; | The Product sorts photos using criteria such as location, date, and time, which the complaint alleges constitutes filtering by "subject identification" based on a "topic, theme or individual." | ¶17 | col. 14:25-32 |
| and transmitting, via a wireless transmitter and to a second image capturing device, the filtered plurality of photographic images. | The Product allows for sharing "sorted photos or AI albums" with "other mobile devices." The complaint includes a screenshot detailing the MyRoll app's sharing functions, which states users can "[e]asily share groups of photos and videos from your gallery" to various social networks (Compl. p. 5). | ¶18 | col. 14:33-36 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over whether the accused product’s alleged sorting by metadata ("location, date, time") meets the claim limitation of "subject identification ... based on a topic, theme or individual." The defense could argue that "subject identification" requires content-based analysis (e.g., recognizing a specific landmark or person), not merely organizing by generic metadata.
- Technical Questions: The infringement analysis raises the question of whether transmitting images to social networks like "WhatsApp, Facebook, G+" (Compl. p. 5) constitutes transmitting "to a second image capturing device" as required by the claim. The court may need to determine if the ultimate recipient (e.g., another user's smartphone) or an intermediary server satisfies this limitation, and what evidence the complaint provides to support that the destination is, in fact, an "image capturing device."
V. Key Claim Terms for Construction
The Term: "subject identification"
- Context and Importance: This term is the core of the filtering limitation. The viability of the infringement allegation depends on whether the accused product's metadata-based sorting (e.g., by date or location) can be construed as "subject identification."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that transfer criteria can be based on "locational information, time, date, image name, etc." ('086 Patent, col. 2:66-67), which may support Plaintiff’s argument that sorting by date and location falls within the claim's scope.
- Evidence for a Narrower Interpretation: The specification’s specific examples of "subject identification" involve recognizing content, such as identifying an image of the "Empire State Building" or associating it with a specific theme ('086 Patent, col. 9:41-54; col. 10:35-40). This could support a narrower construction requiring content analysis beyond simple metadata.
The Term: "second image capturing device"
- Context and Importance: This term defines the required destination for the transmitted images. Infringement of the "transmitting" step hinges on whether the endpoints of the MyRoll app's sharing feature qualify as "image capturing devices."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the "receiving device" in broad terms, noting it may or may not have image capture capabilities and could even be a "stand-alone device such as a key fob" ('086 Patent, col. 5:6-17). One might argue this flexible definition should inform the meaning of "image capturing device" to include any modern smartphone capable of both receiving shared images and capturing its own.
- Evidence for a Narrower Interpretation: Claim 4 specifically uses the term "image capturing device," not the potentially broader "receiving device." The patent figures depict distinct hardware units for capturing and receiving images (e.g., Fig. 1-3), suggesting the claim requires transmission to a device defined by its image capture function, which may not include a web server or a social media platform itself.
VI. Other Allegations
The complaint does not contain explicit counts or factual allegations for indirect infringement or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- Procedural Viability: Given that the USPTO issued a Reexamination Certificate cancelling all claims of the '086 Patent, including the asserted Claim 4, after the complaint was filed, a threshold question is whether Plaintiff’s cause of action can be maintained.
- Definitional Scope: A core claim construction issue will be whether the term "subject identification," which the patent links to "topic, theme or individual," can be construed broadly enough to read on the accused product's alleged function of sorting images by general metadata like date, time, and location.
- Evidentiary Sufficiency: A key evidentiary question will be whether sharing images to social networks, as alleged in the complaint, satisfies the claim requirement of transmitting "to a second image capturing device," or if there is a fundamental mismatch in the technical operation of the accused system versus the architecture described and claimed in the patent.