DCT
1:20-cv-00264
Rothschild Patent Imaging LLC v. Promise Technology Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Patent Imaging LLC (Texas)
- Defendant: Promise Technology, Inc. (Delaware)
- Plaintiff’s Counsel: Chong Law Firm
- Case Identification: 1:20-cv-00264, D. Del., 02/23/2020
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and is therefore deemed to reside in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Apollo Cloud personal storage systems and associated mobile application infringe a patent related to methods for filtering and wirelessly distributing photographic images between mobile devices.
- Technical Context: The technology at issue falls within the domain of automated photo management and sharing, a key feature set for consumer cloud storage services and mobile applications.
- Key Procedural History: The asserted patent is part of a large family of applications with a priority date tracing back to 2008 and is subject to a terminal disclaimer. An ex parte reexamination certificate for the asserted patent was issued on April 1, 2022, which cancelled all claims, including the asserted Claim 4. This post-filing cancellation raises a threshold question about the viability of the infringement action.
Case Timeline
| Date | Event |
|---|---|
| 2008-08-08 | '086 Patent Priority Date |
| 2018-04-03 | '086 Patent Issue Date |
| 2020-02-23 | Complaint Filing Date |
| 2022-04-01 | Reexamination Certificate Issued; Claims 1-4 Cancelled |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,936,086 - Wireless Image Distribution System and Method
- 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 difficulty and "excessive, unnecessary frustration and aggravation" associated with sharing digital photographs among a group of people at a single event, such as a wedding or party, using conventional methods like email or web uploads ('086 Patent, col. 2:3-27).
- The Patented Solution: The invention proposes a system where an "image-capturing mobile device" can automatically receive images, filter them based on pre-defined "transfer criteria," and then transmit the filtered images to other nearby devices. The filtering is based on the subject matter of the image, such as a specific topic, theme, or individual depicted ('086 Patent, Abstract; col. 2:57-67). This is designed to create an automated and selective way to consolidate relevant photos among a group.
- Technical Importance: The technology aimed to streamline the consolidation of event-based photography from multiple sources, a common user challenge before the widespread adoption of modern, seamless cloud-based photo sharing platforms ('086 Patent, col. 2:3-12).
Key Claims at a Glance
- The complaint asserts independent method Claim 4 ('086 Patent, col. 14:21-36; Compl. ¶13).
- The essential elements of Claim 4 are:
- A method performed by an image-capturing mobile device, comprising:
- 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 alleges infringement of "one or more claims... including at least Claim 4," which may suggest a reservation of the right to assert other claims (Compl. ¶13).
III. The Accused Instrumentality
Product Identification
- The "Apollo Cloud storage system and app, and any similar products" (Compl. ¶14).
Functionality and Market Context
- The accused instrumentality is a personal hardware cloud storage device that works in conjunction with a mobile software application (Compl. p.3, "Storage and Sharing. Reinvented." screenshot). This screenshot depicts the Apollo Cloud device next to a smartphone running the associated app.
- The system's functionality includes automatically uploading photos and videos from a user's mobile device to the storage device (Compl. ¶16). The complaint provides a screenshot from a user manual illustrating the "Camera Rolls" automatic upload feature (Compl. p.4, "Using Camera Rolls" screenshot).
- A central accused feature is the "Smart Albums" function, which allegedly "automatically organize[s] photos and videos" based on criteria including location, time, and facial recognition (Compl. ¶17; p.5, "Using Smart Albums" screenshot).
- The system also allows users to share stored photos and albums with other users, who can be designated as "members" (Compl. ¶18). A screenshot from the product website describes the ability to "Share your files with family, friends or co-workers" (Compl. p.6, "Share Content Privately or Publicly" screenshot).
IV. Analysis of Infringement Allegations
’086 Patent Infringement Allegations
| Claim Element (from Independent Claim 4) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a plurality of photographic images; | The Product provides for the importation of images from a mobile device that has a camera. | ¶16 | col. 6:62-65 |
| 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 uses techniques like location tracking and facial recognition for "automatic sorting of the photos by location, time and/or face" in its "Smart Albums" feature. | ¶17 | col. 10:14-24 |
| and transmitting, via a wireless transmitter and to a second image capturing device, the filtered plurality of photographic images. | The Product allows files of filtered or sorted photos ("AI albums") to be shared with "other mobile devices." | ¶18 | col. 6:31-35 |
Identified Points of Contention
- Scope Questions: The infringement theory raises the question of whether sharing photos with another "member" (Compl. ¶18) satisfies the claim limitation of transmitting "to a second image capturing device." A court may need to determine if the recipient device is necessarily an "image capturing device" within the meaning of the claim, or merely a client device for viewing shared files.
- Technical Questions: A factual question is whether the accused product's sorting by "location" and "time" (Compl. ¶17) constitutes filtering based on a "topic" or "theme" as required by the claim. The complaint's allegation that facial recognition is used maps more directly to the "individual" limitation, but the connection between metadata sorting (time/location) and content-based themes may be a point of dispute.
V. Key Claim Terms for Construction
- The Term: "subject identification... based on a topic, theme or individual"
- Context and Importance: This term defines the specific nature of the filtering required by the asserted claim and is central to the infringement analysis. The defendant would likely argue for a narrow construction limited to explicit content analysis, whereas the plaintiff would favor a broader meaning that encompasses sorting by metadata like time or location as a proxy for an event's "theme."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses transfer criteria in broad terms, including "subject matter of the image(s)" ('086 Patent, col. 10:15-16) and provides an example of identifying the "Empire State Building" as a subject, which could be tied to locational data ('086 Patent, col. 9:46-52).
- Evidence for a Narrower Interpretation: The specification explicitly mentions "object recognition software" as a mechanism for identifying subjects ('086 Patent, col. 10:39-40), which could support a narrower interpretation requiring more sophisticated, content-aware analysis rather than simple metadata sorting. The claim's use of "topic, theme or individual" may be argued to point toward the semantic content of the image itself.
VI. Other Allegations
Indirect Infringement
- The complaint does not provide sufficient detail for analysis of indirect infringement. It does not allege specific facts to support the knowledge and intent required for induced infringement, nor does it lay out a basis for contributory infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- Procedural Dispositive Issue: The central issue in this case is the post-filing cancellation of all claims of the '086 patent during reexamination. A threshold question for the court will be whether this action renders the plaintiff's entire complaint for infringement moot, as there is no longer a valid, enforceable patent claim to infringe.
- Definitional Scope: Assuming the claim were still valid, a core issue would be one of definitional scope: can the claim term "subject identification... based on a topic, theme or individual" be construed to cover the accused product's automatic album creation based on metadata such as time and location?
- Evidentiary Support: A key evidentiary question would be one of functional mapping: does the complaint provide sufficient evidence that the accused product's "sharing" function meets the claim requirement of "transmitting... to a second image capturing device," or is there a potential mismatch between the alleged functionality and the specific language of the claim?