Nsixty LLC v. A2Z Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: NSixty, LLC (Ohio)
  • Defendant: a2z, Inc. (Maryland) and Pixe LLC (Maryland)
  • Plaintiff’s Counsel: McDonald Hopkins LLC
• Case Identification: 1:17-cv-334, S.D. Ohio, 05/15/2017
• Venue Allegations: Plaintiff alleges that venue is proper because Defendants are subject to personal jurisdiction in the district as a result of selling or offering to sell infringing products in Ohio, transacting business in the state, and deriving substantial revenue from goods sold in Ohio.
• Core Dispute: Plaintiff alleges that Defendants’ digital photo and video booth products infringe patents related to systems for recording video messages at a kiosk and accessing them through a web-based platform.
• Technical Context: The technology at issue addresses the market for creating and sharing digital memories from events, moving beyond traditional postcards or personal cameras to a kiosk-based service model.
• Key Procedural History: The complaint was filed on May 15, 2017. Subsequent to the filing, both patents-in-suit underwent ex parte re-examination proceedings initiated on October 11, 2017. These proceedings concluded with the cancellation of all claims (1-20) of the '115 patent on October 13, 2020, and the cancellation of all claims (1-21) of the '456 patent on August 14, 2023. The cancellation of all asserted claims is a dispositive event for the viability of an infringement action based on these patents.

Case Timeline

Date	Event
2009-01-15	Priority Date for '115 and '456 Patents
2013-12-31	U.S. Patent 8,619,115 Issues
2016-04-12	U.S. Patent 9,313,456 Issues
2017-05-15	Complaint Filed

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

U.S. Patent No. 8,619,115 - "Video Communication System and Method for Using Same,"

• Patent Identification: U.S. Patent No. 8,619,115, "Video Communication System and Method for Using Same," issued December 31, 2013.

The Invention Explained

• Problem Addressed: The patent describes the limitations of contemporary methods for sharing memories from events, noting that postcards are "tedious" and personal digital cameras or cell phones often have limited storage, sharing capabilities, or quality ('115 Patent, col. 1:25-54).
• The Patented Solution: The invention proposes a system comprising a physical kiosk at a venue where a user can record a video message. The kiosk is connected to a network and uploads the video and associated user data (e.g., email address) to a remote database. The system then provides the user with remote access to their video via a website, for example by sending an email with a web link. ('115 Patent, Abstract; FIG. 1). The database authenticates the user to ensure they access the correct video communication ('115 Patent, col. 2:50-62).
• Technical Importance: This technology sought to provide a streamlined, high-quality solution for capturing and sharing event-based video content without requiring the user to own or carry specific recording equipment ('115 Patent, col. 1:29-38).

Key Claims at a Glance

• The complaint asserts "one or more claims" without specifying any particular claim (Compl. ¶19). Independent claim 1 is representative of the system.
• Independent Claim 1 of the ’115 Patent recites:
  • A "portable kiosk" with an integrated camera, network connection, and graphical user interface.
  • A "database" connected to the network that receives the video and user "identification data" from the kiosk and associates them.
  • A "remote access point" (e.g., a website) for accessing the video.
  • A process wherein a user inputs identification data into the website, and the database "matches" this data with the data from the kiosk to grant access to the video.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,313,456 - "Video Communication System and Method for Using Same,"

• Patent Identification: U.S. Patent No. 9,313,456, "Video Communication System and Method for Using Same," issued April 12, 2016.

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the '115 Patent, the '456 Patent addresses the same technical problem of providing a convenient and high-quality way to capture and share event-based memories ('456 Patent, col. 1:19-54).
• The Patented Solution: The solution is functionally identical to that described in the '115 Patent, involving a kiosk for media capture, a database for storage, and a web-based system for remote user access ('456 Patent, Abstract; FIG. 1). The detailed description is substantially the same as its parent patent ('456 Patent, col. 2:18-col. 3:2).
• Technical Importance: The technology's contribution is consistent with that of the '115 Patent, focusing on a service-based model for video messaging at public venues ('456 Patent, col. 1:21-29).

Key Claims at a Glance

• The complaint asserts "one or more claims" without specification (Compl. ¶19, ¶29). Independent claim 1 is a representative system claim.
• Independent Claim 1 of the ’456 Patent recites:
  • A "portable kiosk system" comprising an integrated "input device" for user identification information and a "message-recording device" for capturing media data.
  • The system is configured to "associate the captured media data with the identification information."
  • The system is also configured to "transmit" the associated data to a networked device for "remote access."
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The complaint identifies the "ChirpE Photo Booth" from Defendant a2z, Inc., and the "Pixe Encore" and "Pixe Wall" from Defendant Pixe LLC (Compl. ¶¶14-15).

Functionality and Market Context

• The complaint alleges these products are "digital communication kiosk[s]" whose "only commercial use" or "sole intended use" is for recording and sharing digital messages in a manner that infringes the patents-in-suit (Compl. ¶¶21, 23, 31, 33). Defendants are alleged to market these products nationwide, including in Ohio, through their respective websites and on social media platforms (Compl. ¶¶16-17). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint provides only conclusory allegations of infringement and does not include claim charts or specific factual assertions mapping product features to claim elements. Therefore, a detailed element-by-element analysis is not possible based on the provided complaint. The core infringement theory is that the Defendants' kiosk products perform the patented method of capturing a video message at one location and making it available for the user to access remotely over the internet (Compl. ¶¶2, 22, 32).

• Identified Points of Contention:
  • Evidentiary Questions: The central issue will be establishing the precise architecture and operation of the accused ChirpE and Pixe systems. The case would depend on evidence regarding how these systems capture user data, associate it with a recorded video, transmit it to a server, and authenticate a user for remote access.
  • Scope Questions ('115 Patent): A potential point of dispute for the '115 Patent would be the "matches" limitation in claim 1. The analysis would question whether the accused systems' method for granting remote access—for instance, by sending a unique, obfuscated link via email—constitutes "matching" identification data entered at the website with data from the kiosk, or if the claim requires a more direct comparison of user credentials.
  • Scope Questions ('456 Patent): The language of claim 1 of the '456 Patent appears broader, requiring the kiosk system to "associate" data and "transmit" it for "remote access." A dispute could arise over the definition of a "portable kiosk system" and whether the combination of the physical booth and the back-end server infrastructure falls within the claim's scope.

V. Key Claim Terms for Construction

The Term: "portable kiosk" ('115 Patent, Claim 1; '456 Patent, Claim 1)

• Context and Importance: The "portable" nature of the kiosk is a limitation in the asserted independent claims of both patents. Its construction is important for defining the physical scope of the claimed invention. Practitioners may focus on this term to determine if it covers a broad range of non-permanent installations typical of event-based services.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests a broad scope, stating the kiosk may be a "free standing unit" (ʻ115 Patent, col. 3:49-50), "mounted or secured to a wall, post, or other stable portion of the venue," or even "portable such as installed in a vehicle, or configured as a mobile unit" ('115 Patent, col. 5:9-13).
  • Evidence for a Narrower Interpretation: The figures depict substantial, standalone structures (ʻ115 Patent, FIGS. 2-3), which a party could argue implies a certain degree of size and form factor, potentially excluding very small or handheld devices.

The Term: "matches said identification data from said website with said identification data associated with said video communication" ('115 Patent, Claim 1)

• Context and Importance: This term is central to the authentication and access mechanism of the '115 Patent's claimed system. The infringement analysis hinges on whether the accused products' method of linking a user to their video meets this specific "matching" requirement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes a user retrieving a video by "inputting a portion of the message data," such as a "username or password," into the website ('115 Patent, col. 2:51-55). This could support an interpretation where any form of authentication that links back to the original kiosk session constitutes "matching."
  • Evidence for a Narrower Interpretation: A party could argue that the term requires a direct comparison of credentials (e.g., a password entered at the kiosk must be the same as one entered at the website), rather than an indirect method like a one-time access token delivered via email, which may not involve the user entering the same "identification data" at the website.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement claim is based on allegations that Defendants had "knowledge" of the patents and "intentionally and actively induced end users" to infringe (Compl. ¶¶24, 34). The contributory infringement claim is based on the allegation that the accused kiosks have "no substantial use other than an infringing use" (Compl. ¶¶25, 35).
• Willful Infringement: The complaint alleges that Defendants' infringement was and continues to be "willful and deliberate" (Compl. ¶¶26, 36). The complaint does not provide a factual basis for pre-suit knowledge, suggesting this claim may rely on notice provided by the filing of the lawsuit itself.

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

1. Dispositive Impact of Re-examination: The most critical issue in this case is the post-filing cancellation of all claims of both patents-in-suit during ex parte re-examination. A court would need to determine the procedural and substantive impact of these events, which typically renders a patent infringement claim moot.
2. Architectural Congruence: Assuming the claims were valid, a central question would be one of architectural congruence: does the specific, end-to-end technical architecture of the accused "ChirpE" and "Pixe" products—from kiosk data entry to server processing to web authentication—map onto the specific system elements and interactions required by the asserted claims, particularly the "matching" step of '115 Patent Claim 1?
3. Pleading Sufficiency: A key procedural question is whether the complaint's factually sparse and conclusory allegations of infringement would be sufficient to meet the plausibility standard required by federal pleading rules, or if they would be vulnerable to a motion to dismiss for failure to state a claim.