DCT

1:16-cv-21761

Prisua Engineering Corp v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:16-cv-21761, S.D. Fla., 05/17/2016
  • Venue Allegations: Venue is alleged to be proper in the Southern District of Florida because a substantial part of the events giving rise to the claim, including Plaintiff's injury, occurred in the district, and because Defendant Samsung has allegedly committed acts of infringement and resides in the district.
  • Core Dispute: Plaintiff alleges that various Samsung mobile phones, tablets, and cameras featuring the "Best Face" application infringe a patent related to editing video data by substituting a user-provided image into an original video stream.
  • Technical Context: The technology at issue involves methods for personalizing digital media by allowing a user to insert their own image or video content into an existing video or graphical sequence.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with an "Infringement Notice," including a detailed claim chart, on August 29, 2014, which was followed by unsuccessful licensing discussions. Significantly, after the filing of this complaint, the asserted patent was subject to an Inter Partes Review (IPR2017-01188), which resulted in the cancellation of claims 1-4, 8, and 11. As this complaint exclusively asserts infringement of claim 1, the cancellation of this claim post-filing presents a fundamental challenge to the viability of the case as pleaded.

Case Timeline

Date Event
2010-03-09 '591 Patent Priority Date
2011-03-08 '591 Patent Application Filing Date
2014-02-11 '591 Patent Issue Date
2014-08-29 Plaintiff sends "Infringement Notice" to Samsung
2016-05-17 Complaint Filing Date
2017-03-29 IPR2017-01188 Filing Date
2023-11-14 IPR Certificate Issued Cancelling Claim 1

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

  • Patent Identification: U.S. Patent No. 8,650,591, "Video Enabled Digital Devices for Embedding User Data in Interactive Applications," issued February 11, 2014.

The Invention Explained

  • Problem Addressed: The patent addresses the technical area of enhancing a user's entertainment experience by allowing them to become more engaged with media content, such as broadcast programming or video games, which is described as a "fast growing technical area" ('591 Patent, Abstract). The background notes a need to connect internet content with broadcast services and provide users the capability to edit or substitute objects within a data stream ('591 Patent, col. 2:31-39).
  • The Patented Solution: The invention describes an apparatus that generates an edited video stream by replacing a portion of an original video with user-provided content ('591 Patent, Abstract). As detailed in the specification, a user can select a "first image" from an original video stream and a "second image" from a user-input video stream (e.g., from a device's camera). The apparatus then "spatially matches" and "substitutes" the first image with the second, creating a new, personalized video stream ('591 Patent, col. 7:45-54). The process is illustrated in Figure 3, which depicts a user's face (150) being substituted into an original image (108) to create a modified image (190).
  • Technical Importance: The technology enables a "participative experience" by allowing a user to, for example, insert their own face onto an avatar in a video game or an actor in a broadcast program ('591 Patent, col. 2:27-29).

Key Claims at a Glance

  • The complaint asserts independent claim 1 ('591 Patent, col. 7:13-54; Compl. ¶21, 27, 37).
  • The essential elements of independent claim 1 include:
    • An interactive media apparatus comprising an image capture device, an image display device, and a data entry device.
    • The data entry device is operated by a user to select a "first image" from an "original video data stream" and a "second image" from a "user input video data stream."
    • A digital processing unit that performs a series of steps:
      • identifying and extracting the user-selected second image;
      • storing the second image in memory;
      • receiving the user's selection of the first image and extracting it;
      • "spatially matching" an area of the second image to an area of the first image, resulting in "equal spatial lengths and widths" between the matched areas; and
      • "performing a substitution" of the first image with the second to generate the final edited video stream.
  • The complaint does not explicitly reserve the right to assert other claims.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities include numerous Samsung mobile phones (e.g., Galaxy S4, S5), tablets (e.g., Galaxy Note 10.1), and digital cameras (e.g., NX300M) (Compl. ¶14).

Functionality and Market Context

  • The complaint focuses on the "Best Face" application available on the accused products, using the Galaxy S4 as an exemplar (Compl. ¶15). It is alleged that the "Best Face" feature uses the device's camera to "capture multiple images" (Compl. ¶15).
  • The user is allegedly able to select a portion of these captured images (the second image) and a portion of an "original video data stream" (the first image) via the touchscreen (Compl. ¶15).
  • The device's processor is alleged to then spatially match and substitute the first image with the user-selected second image (the "Best Face") to create a composite result (Compl. ¶15).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'591 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
an interactive media apparatus for generating a displayable edited video data stream... comprising: an image capture device... an image display device... a data entry device... The Samsung Galaxy S4 is alleged to be the apparatus, with a front/back camera (image capture), LCD screen (display), and touchscreen keyboard (data entry) (Compl. ¶15). ¶15 col. 4:57-59
operated by a user to select the at least one pixel in the frame of the user input video data stream to use as the second image, and further operated by the user to select the at least one pixel to use as the first image The complaint alleges that "users are able to select a portion of the captured images as well as a portion of the original video data stream" using the keyboard (Compl. ¶15). ¶15 col. 7:25-31
a digital processing unit... performing: identifying the selected at least one pixel... extracting the... second image; storing the second image... The complaint alleges the phone's application processor and memory perform these functions as part of the "Best Face" feature (Compl. ¶15). ¶15 col. 7:37-44
receiving a selection of the first image... extracting the first image; The complaint alleges the user selects a portion of the "original video data stream" and the processor extracts it (Compl. ¶15). ¶15 col. 7:45-48
spatially matching an area of the second image to an area of the first image... wherein spatially matching the areas results in equal spatial lengths and widths between said two spatially matched areas; and The complaint alleges the phone's digital processing unit "spatially matches the second image... to the first image" (Compl. ¶15). ¶15 col. 7:49-53
performing a substitution of the spatially matched first image with the spatially matched second image to generate the displayable edited video data stream... The complaint alleges the processor "substitutes said first image with said second image (the user-selected 'Best Face')" (Compl. ¶15). ¶15 col. 7:51-54
  • Identified Points of Contention:
    • Scope Questions: The complaint alleges the "Best Face" feature captures "multiple images" (Compl. ¶15). A threshold question is whether a burst of still photographs, as may be used in the accused feature, constitutes an "original video data stream" as required by the claim. The patent frequently discusses "broadcast" streams, which may suggest a narrower scope than a series of still images ('591 Patent, col. 4:18).
    • Technical Questions: Claim 1 requires a specific method of "spatially matching" that results in "equal spatial lengths and widths" for the matched areas. The complaint makes a conclusory allegation of this function (Compl. ¶15). A key technical question is what evidence exists that the "Best Face" feature performs this precise geometric matching, as opposed to a different algorithm such as landmark-based facial feature alignment, which may not meet this limitation.

V. Key Claim Terms for Construction

  • The Term: "original video data stream"
    • Context and Importance: This term's construction is critical to determining if the accused "Best Face" feature, which is described as operating on "multiple images," falls within the claim's scope (Compl. ¶15). Practitioners may focus on this term because the nature of the input data is a fundamental aspect of the claimed invention.
    • Intrinsic Evidence for a Broader Interpretation: The patent does not provide an explicit definition. The specification mentions various content sources, including "broadcast data," "graphics data," and streams from a "gaming device," which could support an interpretation that covers any sequence of image data, not just traditional video ('591 Patent, col. 4:18, 4:46-47).
    • Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly uses "broadcast" and "TV program" as examples, suggesting the invention was contemplated for use with continuous motion video ('591 Patent, col. 2:50, 4:62-64). This context could support a narrower construction that excludes a set of discrete still photos.
  • The Term: "spatially matching an area... wherein spatially matching the areas results in equal spatial lengths and widths"
    • Context and Importance: The definition of this term dictates the specific technical requirement for aligning the images before substitution. Whether the accused product's algorithm meets this geometric constraint will be a central point of the infringement analysis.
    • Intrinsic Evidence for a Broader Interpretation: The patent does not define "area," which could be argued to encompass non-rectangular shapes or regions defined by bounding boxes, potentially allowing for more flexible alignment techniques to meet the limitation.
    • Intrinsic Evidence for a Narrower Interpretation: The plain language of the claim suggests a geometric comparison where two defined areas, likely rectangular, have identical dimensions. The lack of further definition in the specification may lead a court to apply this plain and ordinary meaning, requiring proof of a direct, dimension-for-dimension match ('591 Patent, col. 7:49-53).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Samsung Korea induced infringement by its U.S. subsidiaries (Compl. ¶37). The basis for knowledge is the August 2014 "Infringement Notice" (Compl. ¶33). Intent is alleged based on Samsung Korea's control over its subsidiaries and its failure to stop the allegedly infringing activity after being notified (Compl. ¶35-36).
  • Willful Infringement: Willfulness is alleged against all defendants (Compl. ¶23, 29, 38). The allegations are based on continued infringement after receiving pre-suit notice of the '591 Patent and the specific infringement allegations in August 2014 (Compl. ¶16, 33).

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

  • A dispositive threshold issue is the procedural viability of the complaint itself. Given that the sole asserted basis for the lawsuit, claim 1 of the '591 patent, was cancelled in an IPR proceeding after the complaint was filed, the case as currently pleaded appears to lack a valid legal foundation. The central question is whether the case can proceed on any surviving claims not originally pleaded.
  • A core issue of definitional scope will be whether the accused "Best Face" feature, which allegedly operates on a set of "multiple images," can be said to process an "original video data stream" as that term is used in the patent. The outcome of this claim construction dispute could determine infringement for the entire product line.
  • A key evidentiary question will be one of technical mechanism: does the accused product's image-compositing algorithm perform the specific "spatially matching" that "results in equal spatial lengths and widths" as required by claim 1, or is there a fundamental mismatch in technical operation that places it outside the claim's literal scope?