Swinford v. 360 Booth Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Stephen M. Swinford (Texas)
  • Defendant: 360 Booth Inc. (Florida); Jay P. Smithweck (Florida)
  • Plaintiff’s Counsel: Eric P. Mirabel
• Case Identification: 8:21-cv-02993, M.D. Fla., 06/27/2023
• Venue Allegations: Venue is alleged to be proper as Defendants reside, maintain their principal place of business, and have committed acts of infringement within Pasco County, Florida.
• Core Dispute: Plaintiff alleges that Defendants’ vehicle photography booths infringe three patents related to systems and apparatuses for creating 360-degree vehicle imagery with a consistent background.
• Technical Context: The technology addresses the market need for high-quality, standardized vehicle photography for online sales, enabling the creation of virtual 360-degree tours without complex and expensive equipment like vehicle turntables.
• Key Procedural History: The complaint alleges a detailed pre-suit history between the parties, beginning with communications in 2012. It asserts that Defendant Smithweck was aware of Plaintiff’s technology, copied its design, and subsequently filed his own patent application while failing to disclose Plaintiff's known prior art to the USPTO. These allegations of pre-suit knowledge, along with later retention of intellectual property counsel and direct notice of the patents-in-suit, form the basis for the willfulness claim.

Case Timeline

Date	Event
2010-03-09	Earliest Priority Date for ’320, ’864, and ’369 Patents
2011-09-15	Application for ’320 Patent Published
2012-02-01	Parties allegedly communicate regarding installing photo booths at Sonic Automotive
2012-09-01	Plaintiff installs his photo studio at Sonic Automotive dealership
2013-01-01	Defendant allegedly installs booths with modified, similar designs
2014-08-12	Defendant Smithweck files his own patent application
2014-09-09	U.S. Patent No. 8,830,320 Issues
2015-03-19	Application for ’864 Patent Published
2016-01-01	Defendant allegedly retains IP counsel
2016-09-06	U.S. Patent No. 9,438,864 Issues
2022-12-08	Plaintiff’s counsel allegedly informs Defendants that ’369 patent application was allowed
2023-01-12	Application for ’369 Patent Published
2023-01-31	U.S. Patent No. 11,570,369 Issues
2023-06-27	Fifth Amended Complaint Filed

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

U.S. Patent No. 9,438,864

• Patent Identification: U.S. Patent No. 9,438,864, "Indoor Producing of High-Resolution Images of the Commonly Viewed Exterior Surfaces of Vehicles, Each with the Same Background View," issued September 6, 2016.

The Invention Explained

• Problem Addressed: The patent identifies conventional methods for vehicle photography, such as using a turntable, as heavy, expensive, and complex. Furthermore, the resulting high-resolution images can be slow for potential buyers to download and view online ('864 Patent, col. 1:26-44).
• The Patented Solution: The invention proposes an apparatus where the vehicle remains stationary. Instead, a first wheeled support holding an imaging device and a second wheeled support holding a display (to act as a consistent background) revolve together around the vehicle ('864 Patent, Abstract). The supports are physically linked by arms, ensuring they maintain their relative positions as they move, as illustrated in configurations like Figure 10 ('864 Patent, Fig. 10; col. 4:40-47).
• Technical Importance: This design obviates the need for a vehicle turntable, aiming to provide a less expensive and less complex system for creating professional, consistent vehicle imagery for online marketing ('864 Patent, col. 1:45-56).

Key Claims at a Glance

• The complaint asserts independent claims 1, 14, and 17, along with several dependent claims (Compl. ¶¶ 27, 31).
• Independent Claim 1 (corrected) requires, in essence:
  • An imaging device on a first wheeled support and a display on a second wheeled support.
  • The supports are opposed and "physically linked by arms."
  • The linked assembly revolves around a stationary vehicle.
  • The wheels of the supports and the vehicle reside on a "supporting plane."
  • Arms are positioned to allow a vehicle to pass under them or can be moved.
• Independent Claim 14 (corrected) adds the limitation that:
  • The wheels of the first and second supports "roll on a track resting on a supporting plane."
• The complaint reserves the right to assert additional claims (Compl. ¶ 26).

U.S. Patent No. 8,830,320

• Patent Identification: U.S. Patent No. 8,830,320, "Indoor Producing of High-Resolution Images of the Commonly Viewed with the Same Background View," issued September 9, 2014.

The Invention Explained

• Problem Addressed: The patent addresses the same technical problem as its continuation, the '864 Patent: the high cost, complexity, and bandwidth requirements associated with traditional vehicle turntable photography ('320 Patent, col. 1:21-39).
• The Patented Solution: The invention is an apparatus comprising two opposed, wheeled supports—one for an imaging device and one for a background display—that are physically linked by arms. This assembly revolves around a stationary vehicle, capturing images of the vehicle against the moving background, ensuring consistency across multiple shots ('320 Patent, Abstract; col. 3:28-34). Figure 2 depicts an embodiment with two arced carriers (20, 30) linked by arms (36, 38) ('320 Patent, Fig. 2).
• Technical Importance: The solution provides a method for achieving 360-degree vehicle photography that is mechanically simpler and potentially more cost-effective than rotating the vehicle itself ('320 Patent, col. 1:40-52).

Key Claims at a Glance

• The complaint asserts independent claim 1 and numerous dependent claims (Compl. ¶ 12).
• Independent Claim 1 requires, in essence:
  • An imaging device on a first wheeled support and a display on a second wheeled support, with wheels resting on a "planar support surface."
  • The supports are opposed and "physically linked by arms."
  • The arms are positioned "high enough" for a vehicle to pass freely underneath.
  • The linked apparatus revolves around the vehicle to capture images.
• The complaint reserves the right to assert additional claims (Compl. ¶ 12).

U.S. Patent No. 11,570,369

• Patent Identification: U.S. Patent No. 11,570,369, "Indoor Producing of High Resolution Images of the Commonly Viewed Exterior Surfaces of Vehicles, Each with the Same Background View," issued January 31, 2023.
• Technology Synopsis: This patent, part of the same family, also aims to solve the problem of creating consistent, high-resolution vehicle images efficiently. It discloses an apparatus featuring at least one curved, upright display with wheels at its base that rest on a "looped track," allowing the display and a relatively fixed imaging device to revolve around a stationary vehicle ('369 Patent, Abstract; col. 2:4-18).
• Asserted Claims: The complaint asserts independent claims 1 and 12, among others (Compl. ¶¶ 38, 39).
• Accused Features: The complaint alleges that Defendants' single-door and two-door booths infringe by incorporating a curved upright display on wheels that move along a track, with an imaging device positioned to revolve with the display around a vehicle (Compl. ¶¶ 38-39).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are Defendants' "single door booth product" and "two-door booth product," marketed as the "360Booth" (Compl. ¶¶ 8, 41).

Functionality and Market Context

• The complaint describes the accused products as automated photo booths for capturing 360-degree views of vehicles (Compl. ¶ 16A). The system allegedly includes a mounted camera and software that enables a camera to be "rotated around the car" to create a series of images for generating a 360-degree view (Compl. ¶ 15B). The complaint references an Instagram post, provided as Exhibit X, which allegedly shows the two-door product costs $80,000 (Compl. ¶ 15B).
• The products are offered for sale on Defendants' website, www.360booth.com, and are positioned in the market for vehicle photography solutions (Compl. ¶ 8). The complaint anticipates that Defendants may deny that they mount cameras on the walls of the two-door product, a point that is central to the plaintiff's alternative theories of infringement (Compl. ¶ 9).

IV. Analysis of Infringement Allegations

The complaint's infringement allegations rely on pictorial claim charts provided as exhibits, which were not available for this analysis. The following summary is based on the complaint's narrative descriptions of those exhibits and its overall infringement theory.

’320 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
an imaging device, mounted on a first support having wheels which rest directly on a planar support surface	The product's camera, which is allegedly mounted on a wheeled support structure that allows it to revolve around the vehicle. The complaint alleges this element is met literally or, in the alternative, under the doctrine of equivalents.	¶¶9, 13, 15B	col. 4:10-14
a display on one surface of a second support having wheels which rest directly on the support surface	The booth's walls, which serve as the background display and are part of a larger wheeled structure. The complaint cites pictorial support in its exhibits for this correspondence.	¶¶13, 15A	col. 4:28-38
the first and second supports are opposed and physically linked by arms which run between and join edges of the first and second supports together	The overall frame and structure of the photo booth, which allegedly links the camera support and the display walls, ensuring they move together in a fixed, opposed relationship.	¶¶13, 14A	col. 3:55-60
the arms are positioned high enough relative to the support surface such that the vehicle can pass freely underneath	The overhead structure of the booth, which is designed to be high enough for a vehicle to be driven into the photography area.	¶14A	col. 4:63-65

’864 Patent Infringement Allegations

Claim Element (from Independent Claim 14)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
an imaging device mounted on a first support having wheels	The camera and its associated wheeled mounting structure within the accused booth.	¶¶27, 31, 35	col. 7:36-40
a display on one surface of a second support having wheels	The background walls of the booth, which are integrated into a wheeled support structure.	¶¶27, 31	col. 7:36-40
physically linked by arms which run between and join the first and second supports together	The frame of the accused booth, which is alleged to serve the function of the claimed arms by physically linking the camera and display supports to enable coordinated revolution.	¶¶27, 31	col. 7:39-44
the wheels of the first and second supports roll on a track resting on a supporting plane	The complaint alleges that a track is present in the accused two-door product and is shown in the pictorial exhibits.	¶28	col. 7:45-48

Identified Points of Contention

• Factual Question: A primary factual dispute, anticipated by the plaintiff, is whether Defendants' products are sold with the "imaging device" (camera) mounted to the structure. The complaint's alternative pleading of indirect infringement suggests this will be a key point of discovery and evidence (Compl. ¶ 9, 16A).
• Scope Questions: A central claim construction issue will be whether the integrated structure of the accused photo booths meets the claim limitations of a "first support" and a "second support" that are "physically linked by arms." The patents' embodiments depict two distinct carriers connected by separate linking members, whereas the accused products may be constructed as a more unitary frame. The resolution of this question will determine whether infringement can be found literally or must be argued under the doctrine of equivalents.

V. Key Claim Terms for Construction

The Term: "support"

• Context and Importance: The asserted independent claims of both the '320 and '864 patents require a "first support" for the imaging device and a "second support" for the display. The infringement case depends on whether the accused booth's structure, which may be unitary, can be conceptually divided into two distinct "supports" as claimed.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The term "support" is not explicitly defined. Plaintiff may argue that any structure that performs the function of holding up the camera or the display, respectively, qualifies as a "support," regardless of whether it is a physically separate component.
  • Evidence for a Narrower Interpretation: The specifications of the patents consistently describe and depict the supports as distinct arced "carriers" (e.g., carrier 20 and carrier 30) ('320 Patent, Fig. 2; '864 Patent, Fig. 2). Defendants may argue the term should be construed more narrowly to mean these separate, wheeled carrier structures.

The Term: "physically linked by arms"

• Context and Importance: This limitation defines the required connection between the two "supports" that ensures their coordinated revolution. The dispute will focus on whether the integrated frame of the accused booths contains structures that meet the definition of "arms." Practitioners may focus on this term because it is crucial to mapping the claims onto a potentially non-infringing, unitary product design.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification does not define "arms," leaving room for an argument that any structural member connecting the camera-holding part of the frame to the display-holding part of the frame functions as an arm.
  • Evidence for a Narrower Interpretation: The patent figures consistently show distinct, separate "arms" (e.g., 36 and 38) that connect the two otherwise separate carriers ('320 Patent, Fig. 2; '864 Patent, Fig. 2). Defendants will likely argue that the term requires such discrete linking elements, not merely an integrated framework.

VI. Other Allegations

Indirect Infringement

• The complaint pleads both induced and contributory infringement in the alternative. The theory is that if Defendants do not install the cameras themselves, they are still liable because the booths are "especially made for use in the infringement," have no substantial non-infringing use, and are sold with the intent that customers will mount cameras to use the advertised 360-degree functionality (Compl. ¶¶ 16B, 36, 40).

Willful Infringement

• The complaint makes extensive allegations to support willfulness. It alleges Defendants had pre-suit knowledge of the patents or took deliberate steps to avoid learning of them, based on a history of direct communication in 2012, alleged copying of Plaintiff's design, and Defendant Smithweck's own 2014 patent filing, which allegedly omitted Plaintiff's known prior art (Compl. ¶¶ 17-22, 28). The complaint further alleges that Defendants' retention of IP counsel in 2016 and direct notice regarding the '369 patent application underscore a reckless disregard for Plaintiff's patent rights (Compl. ¶¶ 23B, 25).

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

• A key evidentiary question will be one of direct versus indirect liability: does the evidence show that Defendants sell a complete, infringing apparatus with an "imaging device" included, or will the case turn on whether their advertising and product design are sufficient to prove they induce or contribute to infringement by their customers?
• A core issue will be one of claim construction and structural equivalence: can the language of the patents, which describes an apparatus of two distinct "supports" connected by "arms," be construed to read on the potentially more integrated structure of the accused photo booths, or will Plaintiff need to rely on the doctrine of equivalents?
• A central question for the fact-finder will be the Defendants' state of mind: do the detailed allegations of a shared history, alleged copying, and conduct before the USPTO establish that any infringement was willful, thereby exposing Defendants to the risk of enhanced damages and attorneys' fees?