DCT
2:25-cv-00287
Rothschild Patent Imaging LLC v. Night Owl SP LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Patent Imaging, LLC (Texas)
- Defendant: Night Owl SP, LLC (Florida)
- Plaintiff’s Counsel: Law Offices of Barbra Stern, PA
- Case Identification: 2:25-cv-00287, M.D. Fla., 04/09/2025
- Venue Allegations: Venue is alleged to be proper based on Defendant maintaining a regular and established place of business within the Middle District of Florida.
- Core Dispute: Plaintiff alleges that Defendant’s Wi-Fi-enabled security cameras and associated mobile application infringe a patent related to methods for filtering and wirelessly distributing photographic images between devices.
- Technical Context: The technology concerns the automated sharing of digital images between electronic devices based on pre-defined criteria, a central feature in modern connected devices like security cameras and smartphones.
- Key Procedural History: The complaint does not mention any prior litigation, IPR proceedings, or licensing history related to the patent-in-suit. The patent-in-suit is subject to a terminal disclaimer.
Case Timeline
| Date | Event |
|---|---|
| 2008-08-08 | '797 Patent Priority Date (filing of parent application) |
| 2013-05-07 | U.S. Patent No. 8,437,797 Issues |
| 2025-04-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,437,797 - "Wireless Image Distribution System and Method"
- Patent Identification: U.S. Patent No. 8,437,797, “Wireless Image Distribution System and Method,” issued May 7, 2013 (the “’797 Patent”).
The Invention Explained
- Problem Addressed: The patent describes the inefficiency and "unnecessary frustration" of prior methods for sharing digital photos, which required users to manually email images or upload them to web services, tasks that were often delayed or never completed (’797 Patent, col. 1:50-2:7).
- The Patented Solution: The invention proposes a system where an "image-capturing device" (e.g., a digital camera) and a "receiving device" are in a communicative relationship, allowing for the automatic or selective wireless distribution of images between them (’797 Patent, col. 2:8-12). The transfer can be controlled by pre-defined "transfer criteria," such as locational information, object recognition, or time, which filter which images are sent from the capturing device to the receiving device (’797 Patent, col. 2:35-43).
- Technical Importance: This approach aimed to streamline image sharing by automating transfers based on context (like location or subject matter), reducing the manual effort required by users. (Compl. ¶11; ’797 Patent, col. 2:8-12).
Key Claims at a Glance
- The complaint asserts independent method claim 9. (Compl. ¶12).
- Claim 9 Elements:
- receiving a plurality of photographic images;
- filtering the plurality of photographic images using a transfer criteria; and
- transmitting, via a wireless transmitter and to a second image capturing device, the filtered plurality of photographic images, wherein
- the transfer criteria is a geographic location of the image-capturing mobile device.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant’s Wi-Fi cameras (e.g., CAM-WNIP2LWA) used in conjunction with the “Night Owl Protect” mobile application. (Compl. ¶¶12-13).
Functionality and Market Context
- The accused cameras connect via Wi-Fi to the Night Owl Protect application, which can be installed on smartphones or tablets. (Compl. ¶13). The cameras feature motion-activated spotlights, human detection, and "Facial Capture" technology, which captures an image of a person's face. (Compl. ¶13).
- Upon detecting a human, the camera is alleged to capture images and video clips and transmit them as real-time alerts to the user's paired mobile device running the Night Owl Protect app. (Compl. ¶15). One screenshot provided in the complaint shows a push notification from the app stating "Someone Has Been Detected (Home)". (Compl. p. 10). The app then organizes the received video clips based on events and locations, such as "Downstairs," "Front Door," and "Driveway." (Compl. ¶15).
IV. Analysis of Infringement Allegations
’797 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a plurality of photographic images; | The camera's "Facial Capture technology" enables it to capture an image of a person's face and record video clips upon detecting a human. | ¶14 | col. 13:2-3 |
| filtering the plurality of photographic images using a transfer criteria; | The camera allegedly filters captured images by sending them to the app only when motion or human detection occurs at the camera's location. | ¶15 | col. 13:4-5 |
| transmitting, via a wireless transmitter and to a second image capturing device, the filtered plurality of photographic images, | The camera, which contains a wireless transmitter, sends the captured video and images as real-time alerts to the Night Owl Protect app installed on a user's mobile device. | ¶16 | col. 13:6-8 |
| wherein the transfer criteria is a geographic location of the image-capturing mobile device. | The camera allegedly sends alerts and images based on its location whenever a human is detected in front of it. The complaint identifies the camera as the "image-capturing mobile device" and the smartphone running the app as the "second image capturing device." A provided screenshot labels the camera accordingly. (Compl. p. 5). | ¶17 | col. 13:9-12 |
Identified Points of Contention
- Scope Questions: A central question may be whether a stationary security camera qualifies as an "image-capturing mobile device" as recited in the claim. While the patent specification includes "camera" as an example of a capturing device (’797 Patent, col. 4:51-53), the claim's use of "mobile" may be a point of dispute.
- Technical Questions: The infringement theory hinges on whether detecting an event (e.g., human presence) at the camera's fixed location is equivalent to "filtering...using a transfer criteria" where that criteria is the "geographic location of the...device." A court may need to determine if the claim requires the system to use location as an affirmative filter (e.g., "send only images from Location X") or if simply reacting to a local event at an otherwise undifferentiated location meets the limitation. The complaint alleges the latter. (Compl. ¶17).
V. Key Claim Terms for Construction
The Term: "transfer criteria is a geographic location of the image-capturing mobile device"
- Context and Importance: This limitation is the crux of the infringement allegation. The viability of the plaintiff's case depends on construing this phrase to cover a system that transmits images in response to an event (human detection) occurring at the camera's physical location. Practitioners may focus on this term because the complaint's theory appears to equate the location of an event with the location as a filter.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that transfer criteria can include "locational information" and that the invention can be configured to communicate images of the "Empire State Building to a receiving device...having a device name 'Bob'" (’797 Patent, col. 9:49-51, col. 10:60-65). This could be argued to support a flexible interpretation where location is a key contextual element for filtering.
- Evidence for a Narrower Interpretation: The patent describes transfer criteria as something that images are "compared to" before communication, suggesting an active filtering step rather than a passive trigger. (’797 Patent, col. 9:39-44). The claim requires that the criteria is the geographic location, which could be interpreted to mean the system must be set to filter based on a specific geographic coordinate, area, or address, not just react to any event that happens to be co-located with the device.
The Term: "image-capturing mobile device"
- Context and Importance: The complaint identifies a stationary, installed security camera as this device. (Compl. ¶13). Defendant may argue that such a device is not "mobile." Practitioners may focus on this term as a potential non-infringement argument based on a plain-meaning interpretation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification broadly defines "capturing device" to include a "digital photographic camera, camcorder, video camera, etc." as well as devices not primarily for image capture like a "cellular telephone, PDA, video game console, etc." (’797 Patent, col. 4:45-57). This broad list could support an argument that "mobile" is descriptive of the general class of modern electronics rather than a strict requirement of portability.
- Evidence for a Narrower Interpretation: The common understanding of "mobile device" implies portability. An argument could be made that a security camera, once installed, is a fixed appliance and therefore not "mobile," distinguishing it from the handheld PDAs and cell phones listed in the specification.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant provides the cameras and the Night Owl Protect application with instructions that encourage and direct customers to perform the allegedly infringing method. (Compl. ¶¶18, 17). This is supported by references to Defendant's marketing materials and product descriptions. (Compl. pp. 7-15).
- Willful Infringement: Willfulness is not pleaded as a separate count. However, the complaint alleges that Defendant has knowledge of the ’797 Patent and the alleged infringement "at least as of the filing of this lawsuit," which could form the basis for a claim of post-filing willful infringement. (Compl. ¶18).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may depend on the court's interpretation of two core issues raised by the claim language and the accused technology:
A core issue will be one of definitional scope: can the claim term "image-capturing mobile device" be construed to read on a security camera that is physically installed in a fixed location?
A key evidentiary question will be one of functional operation: does the accused system's triggering of an alert based on an event (human detection) at the camera's location constitute "filtering... using" the "geographic location" of the device as the transfer criterion itself, as required by the claim?