DCT
1:20-cv-00872
Rothschild Patent Imaging LLC v. Movavi Software Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Patent Imaging LLC (Texas)
- Defendant: Movavi Software, Inc. (Delaware)
- Plaintiff’s Counsel: Chong Law Firm, P.A.; Kizzia Johnson, PLLC
- Case Identification: 1:20-cv-00872, D. Del., 06/28/2020
- 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 photo editing and management software infringes a patent related to methods for filtering and wirelessly distributing digital images between mobile devices.
- Technical Context: The technology addresses the filtering and sharing of digital photos, a common feature in modern photo management applications and mobile operating systems.
- Key Procedural History: The complaint asserts infringement of at least Claim 4 of the ’086 Patent. Public records from the U.S. Patent and Trademark Office indicate that an ex parte reexamination certificate for the ’086 Patent was issued on April 1, 2022, which cancelled all claims of the patent, including the asserted Claim 4. This event occurred after the complaint was filed and presents a significant challenge to the continuation of the suit. The patent itself claims priority from a long chain of continuation applications.
Case Timeline
| Date | Event |
|---|---|
| 2008-08-08 | '086 Patent Priority Date |
| 2018-04-03 | '086 Patent Issue Date |
| 2020-06-28 | Complaint Filing Date |
| 2022-04-01 | Ex Parte Reexamination Certificate Cancels All Claims |
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 identifies the inconvenience and frustration associated with sharing digital photographs among groups of people at events like parties or vacations, noting that manual methods or third-party web services are often not ideal (’086 Patent, col. 2:4-27).
- The Patented Solution: The invention describes a system where a "capturing device" (e.g., a digital camera or smartphone) can filter captured images based on pre-defined "transfer criteria" and then automatically or selectively transmit the filtered images to one or more "receiving devices" that are in a paired relationship over a wireless network (’086 Patent, Abstract; col. 2:36-46). The solution aims to automate the process of distributing relevant photos among a group of individuals in near real-time.
- Technical Importance: The technology seeks to provide an "instantaneous, automatic, and/or selective distribution of images" between devices, streamlining the photo sharing process (’086 Patent, col. 2:32-35).
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 with the following essential elements:
- 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 notes that Defendant has infringed "one or more claims," suggesting a reservation of rights to assert additional claims (Compl. ¶13).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "Movavi Photo Editor and Manager file storage system, and any similar products" (the "Product") (Compl. ¶14).
Functionality and Market Context
- The complaint alleges the Product is software that allows users to manage digital photos (Compl. ¶14). Its accused functionality includes importing or receiving multiple photos from a user device (Compl. ¶15, ¶16).
- The core accused feature is the Product's ability to filter images using criteria that allegedly correspond to the patent's claims. The complaint states the Product uses "facial recognition, geolocation detection etc. for automatic sorting of the photos by location or person" (Compl. ¶17). This is supported by a screenshot of the "Movavi Photo Manager" interface, which depicts features for "Facial Recognition," "Geolocation," and "Automatic Album Creation" based on "date and GPS coordinates" (Compl. p. 5).
- The complaint further alleges that the Product enables the transmission of these filtered photos, stating that "sorted photos or AI albums can be shared with other mobile devices" (Compl. ¶18).
IV. Analysis of Infringement Allegations
’086 Patent Infringement Allegations
| Claim Element (from Independent Claim 4) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method performed by an image-capturing mobile device, comprising: receiving a plurality of photographic images; | The Product "imports and filters photographic images from cameras" and "provides for receiving multiple photos from a user device." | ¶15, ¶16 | col. 14:23-25 |
| filtering the plurality of photographic images using a transfer criteria wherein the transfer criteria is a subject identification of a respective photographic image... wherein the subject identification is based on a topic, theme or individual shown... | The Product filters images using "facial recognition, geolocation detection etc. for automatic sorting of the photos by location or person." | ¶17 | col. 10:35-40 |
| and transmitting, via a wireless transmitter and to a second image capturing device, the filtered plurality of photographic images. | "files of filtered photos (i.e. sorted photos or AI albums) can be shared with other mobile devices." Marketing material notes users can "share vacation photo collections." | ¶18 | col. 14:33-35 |
- Identified Points of Contention:
- Claim Validity: The primary issue is the validity of the asserted claim. The subsequent cancellation of all claims of the ’086 patent by the USPTO during reexamination raises a dispositive question about whether there is any remaining legal basis for an infringement action.
- Scope Questions: Had the claim remained valid, a dispute could arise over the term "second image capturing device." The parties might contest whether any modern smartphone qualifies, or if the term requires a device actively and cooperatively paired within the patented system as described in the specification (’086 Patent, col. 8:31-38).
- Technical Questions: A key technical question would be whether the accused Product’s general "sharing" function performs the specific step of "transmitting, via a wireless transmitter" as required by the claim. The complaint does not specify the underlying technology (e.g., Bluetooth, Wi-Fi, email) used for sharing, leaving open the question of whether it meets this limitation.
V. Key Claim Terms for Construction
The Term: "subject identification"
- Context and Importance: This term is central to the filtering limitation and defines the scope of the claimed invention. The complaint’s theory relies on this term covering modern automated techniques like facial and location recognition (Compl. ¶17).
- Intrinsic Evidence for a Broader Interpretation: The specification suggests a broad scope, stating the transfer criteria can be based on "object recognition, locational information, time, date, image name, etc." (’086 Patent, col. 2:65-67). The claim language itself refers broadly to "topic, theme or individual" (’086 Patent, col. 14:30-32).
- Intrinsic Evidence for a Narrower Interpretation: The specification also provides examples where a user might "manually tag or embed the image(s) with data" or "simply re-name the title of the image" (’086 Patent, col. 9:43-53). A defendant could argue this context suggests the term is directed at user-defined metadata rather than fully automated content analysis.
The Term: "receiving a plurality of photographic images"
- Context and Importance: This is the first step of the claimed method, performed by an "image-capturing mobile device." Its interpretation is critical because the complaint alleges infringement based on the software "importing" images, which may differ from capturing them directly (’086 Patent, col. 4:19-22).
- Intrinsic Evidence for a Broader Interpretation: The plain language of "receiving" could be argued to encompass any method of acquiring an image file on the device, including importing it from storage or another device.
- Intrinsic Evidence for a Narrower Interpretation: An argument could be made that in the context of an "image-capturing mobile device" performing the method, "receiving" should be interpreted as the immediate result of the capture process (i.e., receiving data from the camera sensor), rather than importing a pre-existing file.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege specific facts to support claims of induced or contributory infringement. The allegations focus on direct infringement by the Defendant through acts of "making, using, importing, selling, and/or offering for sale" the accused product (Compl. ¶13).
- Willful Infringement: The complaint does not contain an allegation of willful infringement or plead facts suggesting Defendant had pre-suit knowledge of the ’086 Patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- The central and likely dispositive issue is one of procedural finality: given that the USPTO cancelled all claims of the ’086 patent, including the asserted Claim 4, what legal basis, if any, remains for Plaintiff's infringement action to proceed?
- A secondary, now-hypothetical question is one of definitional scope: could the term "subject identification," which the patent illustrates with examples like manual tagging, be construed to cover the automated facial and geolocation recognition features alleged to be in the accused product?
- A third key question would have been one of evidentiary sufficiency: what evidence demonstrates that the accused software’s general sharing functionality meets the specific claim requirement of "transmitting, via a wireless transmitter and to a second image capturing device," as opposed to using other methods of data transfer to other types of devices?