Sole Festa v. Shenzhen Arashi Vision Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Maurizio Sole Festa and Alexis Fernandez (Florida)
  • Defendant: Shenzhen Arashi Vision Company Ltd. (China)
  • Plaintiff’s Counsel: Trueba & Suarez, PLLC
• Case Identification: 1:19-cv-20711, S.D. Fla., 12/23/2020
• Venue Allegations: Plaintiff alleges venue is proper because a substantial part of the events giving rise to the claims occurred in the Southern District of Florida and Defendant is subject to personal jurisdiction there.
• Core Dispute: Plaintiffs allege that Defendant’s PanoClip line of smartphone lens attachments infringes a patent related to a system for producing 360-degree media using a mobile device's front and rear cameras.
• Technical Context: The technology addresses the market for capturing spherical or 360-degree photos and videos using standard smartphones, which typically lack the native hardware for such imaging.
• Key Procedural History: The complaint alleges that Plaintiffs sent Defendant a cease-and-desist letter on November 20, 2018, putting Defendant on notice of the patent. Subsequent to this notice, Defendant allegedly continued its infringing activities, including filing trademark applications with the U.S. Patent & Trademark Office that asserted a first use in commerce date of June 6, 2018 for the accused products.

Case Timeline

Date	Event
2016-06-16	’918 Patent Application Filing Date
2018-06-06	Alleged First Use in Commerce of Accused Product
2018-11-06	’918 Patent Issued
2018-11-20	Cease-and-Desist Letter Sent to Defendant
2020-12-23	Second Amended Complaint Filed

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 (’918 Patent).

The Invention Explained

• Problem Addressed: The patent’s background section notes that standard smartphones cannot capture 360-degree spherical media without using external, wirelessly connected camera devices or specialized built-in hardware, which can be limiting (’918 Patent, col. 1:8-13).
• The Patented Solution: The invention is a system combining a physical adapter with software to solve this problem. The adapter is a clip-on device with two opposing wide-angle lenses that fit over a smartphone’s existing front and rear cameras (’918 Patent, col. 2:26-29). These lenses expand the field of view of each camera beyond 180 degrees, and a software application on the phone receives the two captured images and "merges" them to create a single, seamless 360-degree image or video (’918 Patent, Abstract; col. 2:45-50).
• Technical Importance: This approach sought to democratize 360-degree content creation by enabling users to leverage the processing power and cameras of their existing smartphones rather than requiring the purchase of a separate, dedicated 360-degree camera device (’918 Patent, col. 1:13-16).

Key Claims at a Glance

• The complaint asserts infringement of "at least claim 1" (Compl. ¶25, ¶32).
• The essential elements of independent claim 1 include:
  • 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, and front and rear cameras.
  • The adapter "fits over and releasably secures" to the computer, aligning its lenses with the computer's camera lenses.
  • The front and rear lenses "expand a capturable field of view" of the computer's cameras.
  • The processor "receives a first captured image from the front camera and a second captured image from the second camera" and "merges" them to "produce a 360 degree media."
• The complaint generally alleges infringement of "one or more claims" but does not specify any dependent claims (Compl. ¶2, ¶32).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as phone accessory devices sold under the trademarks "PANOCLIP" and "PANOCLIP LITE" (Compl. ¶18, ¶24).

Functionality and Market Context

The accused PANOCLIP is a "Snap-On 360° LENS" device designed to attach to a smartphone, such as an iPhone (Compl. ¶25, p. 8). It functions in conjunction with a downloadable software application that allows the smartphone’s two cameras to capture images through the device's lenses and create 360-degree media (Compl. ¶26). The complaint includes a screenshot of the accused device for sale on Amazon.com, suggesting its commercial availability in the United States (Compl. ¶22, p. 6). The complaint also points to Defendant’s U.S. trademark filings as evidence of its use in commerce in the U.S. (Compl. ¶21). A photograph included in the complaint shows the PANOCLIP device itself, a compact white accessory with a prominent lens on its front face (Compl. ¶21, p. 4).

IV. Analysis of Infringement Allegations

Claim Chart Summary

The complaint provides a claim chart alleging that the PANOCLIP device and its associated software meet each limitation of claim 1 of the ’918 Patent. An image of the PANOCLIP attached to a smartphone is provided to illustrate how the device fits over the phone to cover the camera lenses (Compl. ¶25, p. 9).

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A system for producing 360 degree media comprising: an adapter comprising a frame comprising a front side and a rear side forming a channel in between, a front lens comprising a first wide angle lens and a first afocal lens, and a rear lens comprising a second wide angle lens and a second afocal lens	The PANOCLIP is advertised as a system for producing 360-degree media and includes an adapter with a frame, front and rear sides, a channel, and the "requisite lenses."	¶25	col. 5:5-10
wherein the front lens is secured to the front side and faces in a first direction and the rear lens is secured to the rear side and faces in a second direction, wherein the first direction is opposite the second direction	A top-down view of the PANOCLIP is alleged to show the opposing orientation of the front and rear lenses.	¶25	col. 5:10-14
and 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	The PANOCLIP is designed to fit over a smartphone (e.g., an iPhone), which contains a processor, memory, user interface, and front and rear cameras.	¶25	col. 5:15-19
wherein the channel of the adapter fits over and releasably secures to a portion of the computer so that the front lens covers the front camera lens, and the rear lens covers the rear camera lens	The PANOCLIP is designed to fit over a smartphone such that its lenses align with and cover the smartphone's front and rear camera lenses.	¶25	col. 5:19-23
wherein the front lens and the rear lens expand a capturable field of view of the front camera and the rear camera	The information for the PANOCLIP allegedly "touts that the application... permits the creation of a 360 degree video."	¶25	col. 5:23-26
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 downloadable application allegedly allows the processor to receive images from both cameras and merge them to create 360-degree media. A marketing image states "Spin View turns your best 360° photos into dynamic video clips" (Compl. ¶25, p. 10).	¶25	col. 6:1-5

Identified Points of Contention

• Scope Questions: The complaint asserts the PANOCLIP has the "requisite lenses" but provides no technical detail on their optical properties (Compl. ¶25, p. 8). This raises the question of whether the accused lenses meet the specific claim limitation of being both a "wide angle lens" and an "afocal lens." The definition and scope of "afocal lens" may become a central point of dispute.
• Technical Questions: Claim 1 requires the processor to "merge" the two captured images. The patent specification describes a specific multi-step process for this, including de-warping, splitting, aligning, and synthesizing into an equirectangular projection (’918 Patent, col. 4:24-34). A key question for the court will be whether the accused PANOCLIP software performs a process that falls within the scope of the term "merges" as used in the claim.

V. Key Claim Terms for Construction

• The Term: "afocal lens"

• Context and Importance: This is a specific technical term in the field of optics. Whether the lenses in the accused PANOCLIP device meet this definition will be critical to the infringement analysis. Practitioners may focus on this term because infringement could turn on whether it is given its standard technical meaning or a broader, functional definition based on the patent's description.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification provides a functional description, stating that the "afocal lens automatically adjusts to the focus of the camera lenses of the computer" (’918 Patent, col. 3:47-49). A party could argue this functional language defines the term more broadly than its strict scientific meaning.
  • Evidence for a Narrower Interpretation: The term "afocal lens" has a well-established technical definition (an optical system with an infinite effective focal length). A party may argue that, absent an explicit redefinition by the patentee, the term should be construed according to its plain and ordinary meaning to a person skilled in the art of optics. The patent describes it as part of a "pair of optical elements," which could also suggest a specific, narrower structure (’918 Patent, col. 3:45-47).

• The Term: "merges"

• Context and Importance: This term defines the software-based action that combines two separate images into the final 360-degree media. The infringement analysis for the software component of the accused system will depend heavily on the construction of this verb.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself does not specify the steps involved in "merging." A party could argue that any software process that combines the two images to create a single spherical media file infringes.
  • Evidence for a Narrower Interpretation: The detailed description provides a specific sequence of steps for the merging process, including that images may be "de-warped," "split, aligned and merged," and "synthesized into an equirectangular spherical projection" (’918 Patent, col. 4:25-34). A party could argue that these disclosed steps define and limit the scope of the term "merges."

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendant instructs users to download the software application and secure the device to their smartphones in an infringing manner (Compl. ¶39, ¶41). Contributory infringement is alleged on the basis that the PANOCLIP device is a material part of the patented system, is not a staple article of commerce, and is known by Defendant to be especially adapted for an infringing use (Compl. ¶47).
• Willful Infringement: Willfulness is alleged based on Defendant’s continued infringement after receiving Plaintiffs’ cease-and-desist letter dated November 20, 2018 (Compl. ¶17, ¶19, ¶33).

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

• A core issue will be one of technical definition: does the optical system in the accused PanoClip device constitute an "afocal lens" as that term is construed in the context of the ’918 Patent, or does it employ a different optical design?
• A key evidentiary question will be one of process equivalence: does the accused software’s method for combining two images into a 360-degree view meet the "merges" limitation of Claim 1, particularly in light of the specific merging process detailed in the patent’s specification?
• Finally, the case may turn on knowledge and intent, as Plaintiffs have alleged willfulness based on a pre-suit notice letter, raising the question of whether Defendant’s conduct after that date was objectively reckless.