DCT
1:19-cv-20710
Festa v. Nomatterwhat Tech Ltd
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Maurizio Sole Festa and Alexis Fernandez (Florida)
- Defendant: Nomatterwhat Technologies, Limited (Hong Kong)
- Plaintiff’s Counsel: Alcoba Law
- Case Identification: 1:19-cv-20710, S.D. Fla., 07/27/2020 (First Amended Complaint)
- Venue Allegations: Venue is alleged to be proper based on Defendant being subject to personal jurisdiction in the district and because a substantial part of the events giving rise to the claims occurred there.
- Core Dispute: Plaintiffs allege that Defendant’s smartphone lens accessory system for capturing 360-degree media infringes a patent related to a system combining a dual-lens adapter and a computer for the same purpose.
- Technical Context: The technology involves add-on optical hardware and associated software for smartphones, enabling them to capture spherical or 360-degree photos and videos, a feature not standard on such devices.
- Key Procedural History: The complaint references a pre-suit notice letter sent to the Defendant on November 20, 2018, shortly after the patent issued, which may be relevant to allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-06-16 | '918 Patent Application Filing Date |
| 2018-10-06 | Date of Proforma Invoice for Accused Product sample |
| 2018-11-06 | '918 Patent Issue Date |
| 2018-11-20 | Pre-suit notice letter sent to Defendant |
| 2020-02-20 | Alleged first use in commerce date for Accused Product |
| 2020-07-27 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,122,918 - "SYSTEM FOR PRODUCING 360 DEGREE MEDIA"
- Patent Identification: U.S. Patent No. 10,122,918, "SYSTEM FOR PRODUCING 360 DEGREE MEDIA", issued November 6, 2018.
The Invention Explained
- Problem Addressed: The patent asserts that standard smartphones cannot capture 360-degree spherical media content without using external, wirelessly connected camera devices or specialized built-in hardware, which creates a need for a simpler solution ('918 Patent, col. 1:8-15).
- The Patented Solution: The invention is a system that combines a physical adapter with a computer, such as a smartphone. The adapter is a frame holding a front lens and a rear lens that aligns with the phone's front and rear cameras, respectively ('918 Patent, col. 1:20-34). These specialized lenses (each comprising a wide-angle and an afocal lens) expand the field of view of the phone's cameras to over 180 degrees. A processor on the computer then merges the two captured images to create a single 360-degree media file ('918 Patent, col. 1:30-34, Fig. 2).
- Technical Importance: The invention provides a method for converting a conventional smartphone into a 360-degree camera through a releasable hardware accessory and software, avoiding the need for a separate, dedicated 360-degree camera device ('918 Patent, col. 2:31-36).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶25).
- Independent Claim 1 requires:
- An adapter with a frame, a front lens, and a rear lens.
- The front lens comprises a first wide angle lens and a first afocal lens.
- The rear lens comprises a second wide angle lens and a second afocal lens.
- A computer (e.g., a smartphone) with a processor, memory, user interface, front camera, and rear camera.
- The adapter releasably secures to the computer, covering the cameras with its respective lenses.
- The front and rear lenses expand the capturable field of view of the cameras.
- The processor receives a first image from the front camera and a second image from the rear camera.
- The processor merges the first and second images to produce a 360-degree media file.
- The complaint reserves the right to assert additional claims (Compl., Ex. E, p. 37).
III. The Accused Instrumentality
Product Identification
- The "Fusionlens 360" phone accessory devices and associated software (Compl. ¶19).
Functionality and Market Context
- The accused product is described as a "battery-free lens system to capture full 360°" that attaches to a smartphone (e.g., an iPhone) (Compl., Ex. C, p. 25). It uses a dual-lens system (front and rear) to "expand the perspective of iPhone" (Compl., Ex. C, p. 26).
- The system requires a software application, the "FusionLens app," which is used to "Capture seamless 360" media (Compl., Ex. C, p. 25-26). The complaint alleges this system enables users to capture 360-degree media by applying front and rear camera lenses and processing the images via a software user interface (Compl. ¶19).
- The complaint provides a photograph of the accused product's packaging, which markets it as a "Dual lens system" capable of "HD Image" capture (Compl., Ex. C, p. 25).
IV. Analysis of Infringement Allegations
The complaint provides an exemplary claim chart in Exhibit E, which forms the basis of its infringement allegations for Claim 1.
Claim Chart Summary
'918 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an adapter comprising, a frame comprising, a front side and a rear side forming a channel in between | The Fusionlens device is alleged to be an adapter with a frame. A visual provided in the complaint shows the accused device mounted on a stand, depicting its front side, rear side, and the channel that fits over a phone (Compl., Ex. E, p. 40, Fig. 1). | Ex. E, p. 38 | col. 3:10-12 |
| a front lens comprising a first wide angle lens and a first afocal lens | The complaint alleges the front lens of the accused product meets this limitation. It provides a dissected view of the Fusionlens assembly, identifying a "Wide Angle Assembly" and an "afocal attachment 18" (Compl., Ex. E, p. 41, Fig. 2 B). | Ex. E, p. 38 | col. 3:21-49 |
| a rear lens comprising a second wide angle lens and a second afocal lens | The complaint alleges the rear lens is structurally identical to the front lens, comprising both a wide-angle and afocal element (Compl., Ex. E, p. 38). | Ex. E, p. 38 | col. 3:21-49 |
| a computer comprising, a processor, a memory, a user interface, a front camera comprising a front camera lens, and a rear camera comprising a rear camera lens, wherein the channel of the adapter fits over and releasably secures to a portion of the computer... | The complaint alleges this is met by any compatible smartphone to which the Fusionlens device is attached. The product packaging identifies compatibility with "iPhone 7 / 8 Series" (Compl., Ex. C, p. 25). | Ex. E, p. 39 | col. 3:50-52 |
| wherein the front lens and the rear lens expand a capturable field of view of the front camera and the rear camera, wherein the processor receives a first captured image from the front camera and a second captured image from the second camera; and merges the first captured image with the second captured image to produce a 360 degree media. | The accused system is alleged to perform this function through its combination of hardware and software. Product marketing states it provides a "Full 360° Dual Fisheye Lens" to "Expand the perspective of iPhone" and uses an app to "Capture seamless 360" (Compl., Ex. C, p. 26). The complaint alleges the processor of the attached smartphone performs the receiving and merging steps (Compl., Ex. E, p. 39). | Ex. E, p. 39 | col. 4:21-36 |
Identified Points of Contention
- Scope Questions: A central dispute may concern the meaning of "afocal lens." The complaint's infringement allegation relies on its own dissection and labeling of the accused product to include an "afocal attachment" (Compl., Ex. E, p. 41). The case may turn on whether the accused device's optical components perform the function of an "afocal lens" as that term is construed from the patent's specification.
- Technical Questions: What evidence demonstrates that the accused "FusionLens app" performs the claimed step of "merg[ing] the first captured image with the second captured image to produce a 360 degree media"? The infringement analysis will depend on the specific software operations for image processing, alignment, and stitching.
V. Key Claim Terms for Construction
- The Term: "afocal lens"
- Context and Importance: This term appears in Claim 1 and is a specific type of optical element required for both the front and rear lenses. The complaint's infringement theory hinges on identifying a corresponding "afocal attachment" in the accused device (Compl., Ex. E, p. 41). The construction of this term will be critical to determining if a key technical element of the claim is met, as a simple wide-angle or fisheye lens may not suffice. Practitioners may focus on this term because it represents a specific technical limitation beyond a generic lens.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a functional definition: "An afocal lens is an optical lens that produces no net convergence or divergence of the beam, i.e. has an infinite effective focal length" ('918 Patent, col. 3:42-44). This definition is based on optical properties rather than a specific physical structure.
- Evidence for a Narrower Interpretation: The specification states that the afocal lens "automatically adjusts to the focus of the camera lenses of the computer" ('918 Patent, col. 3:47-49). A defendant may argue this statement limits the scope of "afocal lens" to one that possesses this automatic adjustment capability, potentially narrowing it beyond the general definition.
VI. Other Allegations
- Indirect Infringement: While not pleaded as a separate count, the complaint contains factual allegations that may support a claim for induced infringement. It notes that the Defendant's product packaging and marketing direct users to download the "FusionLens app" to "Capture seamless 360" media, which allegedly instructs users to operate the device in an infringing manner (Compl., Ex. C, p. 25-26).
- Willful Infringement: The complaint seeks enhanced damages pursuant to 35 U.S.C. § 285 (Compl., Prayer for Relief ¶F). The basis for this appears to be pre-suit knowledge, as Plaintiffs provided a copy of a notice letter sent to Defendant on November 20, 2018, which identified the then-pending patent application and the accused product line (Compl. ¶18; Ex. B).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and technical proof: What is the proper construction of the term "afocal lens"? And does the accused Fusionlens product, which Plaintiffs label as having an "afocal attachment," contain an optical component that meets the court's definition of that term?
- A second key question will be evidentiary: What technical evidence will be presented to demonstrate that the accused FusionLens software application performs the specific image processing steps recited in Claim 1, particularly "merg[ing] the first captured image with the second captured image," as opposed to other methods of creating a spherical image?
- A final question relates to damages and willfulness: Did the Defendant have pre-suit knowledge of its alleged infringement as a result of the November 2018 notice letter, and if so, was its continued conduct sufficient to support a finding of willful infringement and justify enhanced damages?