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., 12/20/2022
• Venue Allegations: Venue is alleged to be proper as Defendants reside, maintain their principal place of business, and have committed acts of infringement in Pasco County, Florida, within the Middle District of Florida.
• Core Dispute: Plaintiff alleges that Defendants’ vehicle photography booths infringe patents related to an apparatus and method for capturing 360-degree images of a stationary vehicle by revolving an imaging device and a background display around it.
• Technical Context: The technology addresses the market for high-quality, consistent vehicle imagery for online automotive sales, offering an alternative to rotating the vehicle itself on a turntable.
• Key Procedural History: The filing is a Fourth Amended Complaint. The complaint alleges a lengthy history of pre-suit interaction between the parties, including allegations that Defendant Smithweck competed with Plaintiff for a customer in 2012, subsequently copied Plaintiff’s design, and failed to disclose Plaintiff’s known, published patent applications to the USPTO during the prosecution of Defendant’s own patent.

Case Timeline

Date	Event
2010-03-09	Earliest Priority Date for ’320, ’321, and ’864 Patents
2012-09-01	Plaintiff alleges installation of its photo studio after competing with Defendant
2014-08-12	Defendant Smithweck allegedly files his own patent application
2014-09-09	U.S. Patent No. 8,830,320 Issues
2014-09-09	U.S. Patent No. 8,830,321 Issues
2016-09-06	U.S. Patent No. 9,438,864 Issues
2022-12-20	Complaint Filing Date

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

U.S. Patent No. 8,830,320 - "Indoor Producing of High-Resolution Images of the Commonly Viewed with the Same Background View"

• Patent Identification: U.S. Patent No. 8,830,320, issued September 9, 2014.

The Invention Explained

• Problem Addressed: The patent’s background section identifies the high cost, complexity, and heavy equipment associated with using a turntable to rotate a vehicle for photography. It also notes the difficulty of capturing images of a vehicle's uppermost surface with such systems. (’320 Patent, col. 1:21-39).
• The Patented Solution: The invention proposes an apparatus where both an imaging device and a background display revolve around a stationary vehicle. The imaging device and display are mounted on wheeled supports that are physically linked by arms, ensuring they maintain their relative positions as they circle the vehicle. (’320 Patent, Abstract; col. 2:1-10). This configuration allows for the creation of a series of images with a consistent background without needing to move the vehicle itself.
• Technical Importance: This approach sought to simplify the process of creating 360-degree vehicle tours, a critical marketing tool for online auto sales, by eliminating the need for a large, expensive vehicle turntable. (’320 Patent, col. 1:21-28).

Key Claims at a Glance

• The complaint asserts infringement of independent claim 1.
• Claim 1 requires, in essence:
  • An imaging device on a wheeled first support and a display on a wheeled second support.
  • The supports are opposed and "physically linked by arms."
  • The arms are positioned high enough for a vehicle to pass underneath.
  • The apparatus revolves around the vehicle to capture multiple images where the display is also captured in each image.
• The complaint asserts infringement of numerous dependent claims, including 3, 6, 9, 11-13, 15, and 17-24 (Compl. ¶¶12, 26).

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"

• Patent Identification: U.S. Patent No. 9,438,864, issued September 6, 2016.

The Invention Explained

• Problem Addressed: Like its parent, the ’320 patent, this patent addresses the challenges of using vehicle turntables for photography, citing them as "heavy, expensive and complex." (’864 Patent, col. 1:33-36).
• The Patented Solution: The ’864 patent further develops the concept of a revolving imaging system. The key distinction in its independent claims is the introduction of a "track" on which the wheeled supports for the imaging device and display roll, providing a more defined path of revolution around the stationary vehicle. (’864 Patent, col. 7:45-47; Fig. 10).
• Technical Importance: By introducing a track system, the invention aimed to provide greater precision and repeatability in the movement of the imaging apparatus, ensuring consistent framing and motion for high-quality vehicle photography. (’864 Patent, col. 3:38-43).

Key Claims at a Glance

• The complaint asserts infringement of independent claims 1 and 14.
• Claim 1 is similar to claim 1 of the ’320 patent, requiring opposed, arm-linked supports for an imaging device and a display that revolve around a vehicle.
• Claim 14 adds a key limitation, requiring 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 numerous dependent claims (Compl. ¶¶27, 31).

U.S. Patent No. 8,830,321 - "Producing High-Resolution Images of the Commonly Viewed Exterior Surfaces of Vehicles, Each with the Same Background View"

• Patent Identification: U.S. Patent No. 8,830,321, issued September 9, 2014.
• Technology Synopsis: The ’321 patent also discloses an apparatus with a revolving imaging device and display for a stationary vehicle. It is distinguished by claiming that the wheels on the supports can "rotate on an axis such that the arc the first and second supports follow as they move on the support surface can be altered," providing adjustability to the path of revolution. (’321 Patent, col. 4:51-56).
• Asserted Claims: Claims 1-4 and 7-19 are asserted under the doctrine of equivalents (Compl. ¶37).
• Accused Features: The complaint alleges that the wheel arrangement in the single-door and two-door products performs substantially the same function as the claimed adjustable-arc wheels, thereby infringing under the doctrine of equivalents (Compl. ¶38).

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 photography studios designed to create 360-degree views of vehicles for online marketing (Compl. ¶8). The complaint alleges that these products operate by revolving a camera around a stationary vehicle, which is a core feature of the patented technology (Compl. ¶8). An Instagram post referenced in the complaint suggests a significant commercial value, with the two-door product priced at $80,000 and the single-door product estimated at $40,000 (Compl. ¶15B). The complaint alleges that for the accused products to function as advertised, they must include mounted cameras or be used with customer-mounted cameras (Compl. ¶16A).

IV. Analysis of Infringement Allegations

The complaint does not provide the referenced claim chart exhibits. The following summarizes the infringement allegations for the lead patents based on the narrative descriptions in the complaint.

’320 Patent Infringement Allegations

• The complaint’s primary infringement theory for the ’320 Patent is under the doctrine of equivalents, though it pleads literal infringement in the alternative (Compl. ¶¶12, 13A, 25). The central allegation is that Defendants' single-door and two-door products contain elements that are the same as or equivalent to each limitation of the asserted claims (Compl. ¶13A). For example, the complaint references pictorial support in "Exhibit 2C" to show that the accused products have wheeled supports for a camera and display, which are linked by arms and revolve around a vehicle (Compl. ¶13A). The complaint specifically alleges that an "adjustable mount" shown in an exhibit for the accused product is equivalent to the claimed "extension projecting downwardly" for mounting an imaging device (Compl. ¶15A). The complaint also references visuals in "Exhibit 2C" to map other claimed features, such as a display composed of smaller sections and a background view, to the accused products (Compl. ¶15A).

’864 Patent Infringement Allegations

• The infringement allegations for the ’864 Patent also rely on both literal infringement and the doctrine of equivalents (Compl. ¶¶26, 27, 31). The complaint alleges that the accused products contain all elements of the asserted claims. A key allegation relates to independent claim 14, which requires the support wheels to "roll on a track." The complaint asserts that this "track however is also present in Defendants' ... products, as shown on most of the pages in Exhibit 2A" and "Exhibit 2B" (Compl. ¶¶28, 32). An image described in the complaint as being from "Exhibit 2B" allegedly shows an extension with a camera attached, corresponding to the claimed "extension projecting downwardly" for mounting the imaging device (Compl. ¶35). The complaint repeatedly references "arrows" in Exhibits 2A and 2B that allegedly indicate correspondence between claim elements and features of the accused products (Compl. ¶¶27, 31).

Identified Points of Contention

• Equivalency vs. Literal Scope: The heavy reliance on the doctrine of equivalents suggests potential literal differences between the claimed invention and the accused products. A central question will be whether the accused products' components and operations are legally equivalent to the claimed elements, particularly the "track" of the ’864 Patent and the adjustable-arc wheels of the ’321 Patent.
• Direct vs. Indirect Infringement: The complaint raises a significant factual question as to whether Defendants' products are sold with a mounted "imaging device" (camera). The complaint’s alternative pleading of indirect infringement suggests this is a point of dispute. If Defendants do not supply the camera, the infringement analysis will depend on whether their actions constitute inducement or contributory infringement based on customer actions (Compl. ¶¶9, 16A).

V. Key Claim Terms for Construction

Term 1 (’320 Patent, Claim 1): "physically linked by arms"

• Context and Importance: The structural integrity and coordinated movement of the apparatus depend on this linkage. The definition will determine whether a variety of connection methods fall within the claim scope, or if it is limited to the specific structures shown in the embodiments.
• Intrinsic Evidence for a Broader Interpretation: The specification suggests that the linkage is not limited to two physical arms, stating that the supports could be linked by "one beam which is affixed to the ceiling" or even by "shining electronic beams from one support to a receptor on the opposing support" to coordinate movement. (’320 Patent, col. 3:51-59).
• Intrinsic Evidence for a Narrower Interpretation: The primary embodiment shown in Figure 2 depicts two distinct physical arms (36, 38) connecting the opposing ends of the wheeled carriers (20, 30). A defendant may argue that "arms" in the plural requires a structure like the one depicted, rather than a single overhead beam.

Term 2 (’864 Patent, Claim 14): "track"

• Context and Importance: This term is a key limitation differentiating claim 14 from other independent claims. The infringement allegation for this claim hinges on whether the accused product's wheel guidance system meets the definition of a "track."
• Intrinsic Evidence for a Broader Interpretation: The specification introduces the concept as an alternative to simply rolling on a surface, stating "The wheels 22 and 32 could also ride on a track instead of residing on a surface." (’864 Patent, col. 3:24-26). This could be interpreted broadly to mean any defined path.
• Intrinsic Evidence for a Narrower Interpretation: Figure 10 explicitly depicts a physical, circular "track 140" that the wheels engage. The claim language further requires the track to be "resting on a supporting plane," which may suggest a distinct, physical structure laid upon the floor, rather than merely a painted line or a groove in the floor itself.

VI. Other Allegations

Indirect Infringement

• The complaint pleads indirect infringement as a primary alternative. It alleges that if Defendants do not directly mount cameras on the accused booths, they induce and contribute to infringement by their customers. The basis for this claim is that the products are allegedly "especially made for use in the infringement," have "no substantial non-infringing use," and that Defendants' advertising encourages the infringing use (i.e., capturing 360-degree views, which requires a camera). (Compl. ¶¶9, 16A, 36, 40).

Willful Infringement

• Willfulness is alleged based on extensive claims of pre-suit knowledge. The complaint asserts that Defendant Smithweck knew of Plaintiff's technology from direct business competition in 2012, copied the design, and then took "deliberate actions to avoid learning" of the patents by not disclosing Plaintiff's known prior art applications during the prosecution of his own patent. The complaint further infers knowledge from a "freedom to operate" search that it claims should have been conducted by Defendants' counsel in 2016. (Compl. ¶¶17-25).

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

This case presents several intertwined factual and legal issues. The resolution will likely depend on the court's findings on the following key questions:

• A central factual question will be one of product configuration and distribution: are the accused "360Booth" products sold with a mounted "imaging device," or does the infringement analysis turn entirely on a theory of indirect infringement, requiring proof that Defendants actively instruct or encourage their customers to complete the patented system?
• A key legal issue will be one of claim scope and equivalence: with infringement pleaded largely under the doctrine of equivalents, the court will have to determine if the accused products' wheel and guidance system performs substantially the same function, in substantially the same way, as the claimed "track" required by the ’864 patent.
• A critical question for damages and indirect infringement will be one of scienter: do the detailed allegations of prior business competition, alleged design copying, and actions during patent prosecution establish that Defendants had pre-suit knowledge of the patents-in-suit or engaged in willful blindness?