DCT

8:17-cv-00236

Burnett v. Panasonic Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:17-cv-00236, D. Md., 01/26/2017
  • Venue Allegations: Venue is alleged to be proper in the District of Maryland based on Defendants' continuous and systematic business activities within the district.
  • Core Dispute: Plaintiff alleges that certain of Defendant’s professional cameras and camcorders infringe a patent related to a method and system for converting and encoding geospatial data (such as GPS coordinates) into a specific, concatenated digital format within video files.
  • Technical Context: The technology concerns the embedding of precise location and time metadata with digital media at the point of capture, a function with market significance for professional video production, digital asset management, and evidence gathering.
  • Key Procedural History: The complaint details an extensive pre-suit history, including the Plaintiff's predecessor's participation in the SMPTE standards body, declarations to license the patent-in-suit on reasonable and non-discriminatory (RAND) terms, a subsequent withdrawal of those declarations just prior to filing suit, and multi-year licensing negotiations with Panasonic that included a fully executed Memorandum of Understanding (MOU) but did not result in a final license agreement.

Case Timeline

Date Event
1999-07-26 '286 Patent Priority Date (filing of Provisional App. No. 60/145,694)
2006-09-12 U.S. Patent No. 7,107,286 Issued
2013-08-08 Memorandum of Understanding (MOU) executed between Plaintiff's predecessor (GLA) and Panasonic
2014-01-30 Panasonic allegedly began selling the accused 4K VariCam 35 Digital Video Camcorder
2017-01-24 Plaintiff allegedly notified standards bodies that the patent portfolio would no longer be offered under RAND/FRAND terms
2017-01-26 Complaint Filing Date

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

U.S. Patent No. 7,107,286 - "Integrated information processing system for geospatial media", Issued September 12, 2006

  • The Invention Explained:

    • Problem Addressed: The patent's background section identifies a need for more accurate and current geospatial information than was available from existing sources like U.S. Census Bureau TIGER/Line™ files. It also notes that prior art methods for associating media with location data were insufficient, lacking detailed dimensionality (e.g., altitude) and precise timestamping, which hindered efficient data processing and management (ʼ286 Patent, col. 1:21-44; col. 3:15-19).
    • The Patented Solution: The invention proposes a method and system, including a "geospatial media recorder," to solve this problem by converting standard geographic coordinate formats (latitude, longitude, altitude) and time information into a proprietary, concatenated data string referred to as a "GEOCode." This single, all-numeric data string is designed to be encoded directly onto a data track of a video frame at the time of acquisition, creating a permanent, machine-readable link between the media and its specific location and time of creation (ʼ286 Patent, Abstract; col. 9:15-28; Fig. 26).
    • Technical Importance: The described approach sought to create a standardized, efficient method for embedding precise, multi-dimensional geospatial data directly into media files at the moment of capture, thereby streamlining post-production workflows and digital asset management (ʼ286 Patent, col. 5:9-12).

  • Key Claims at a Glance:

    • The complaint asserts independent claims 1 (an apparatus claim for a "geospatial media recorder") and 9 (a method claim for "geospatial information processing") (Compl. ¶92).
    • The essential elements of independent claim 1 include:
      • A geospatial media recorder, comprising:
      • "converting means" for converting longitude and latitude coordinate representations and altitude representations into "individual discrete all-natural number" representations; and
      • "combining means" for concatenating these individual representations into a "single discrete all-natural number geospatial coordinate measurement representation" that allows a user to geospatially reference entities or objects.
    • The complaint does not explicitly reserve the right to assert dependent claims, though this is common practice.

III. The Accused Instrumentality

  • Product Identification: The complaint names the "Panasonic's 4K VariCam 35 Camcorder" as a primary infringing product and provides a list of thirty-one (31) models of Panasonic cameras and camcorders alleged to incorporate "geospatial data management features" (Compl. ¶84, ¶92).
  • Functionality and Market Context: The complaint alleges that the accused products, particularly the VariCam 35, contain an internal GPS receiver that is "factory set to ON" for the purpose of recording geospatial data (Compl. ¶93). This capability is alleged to make the camcorder a "geospatial media recorder." The complaint further alleges that the device "converts the geospatial data received from the GPS receiver into clip geospatial metadata" and formats that metadata into the SMPTE 330M (UMID) standard (Compl. ¶93). The complaint presents a table that identifies which of the accused models are GPS-capable and which utilize the SMPTE UMID and MXF standards. The complaint provides a table listing thirty-one accused Panasonic camera models and their alleged capabilities, including GPS functionality and use of SMPTE standards (Compl. p. 15).

IV. Analysis of Infringement Allegations

’286 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
converting means for converting longitude and latitude... and altitude... representations into individual discrete all-natural number geographic coordinate and measurement representations; The accused 4K VariCam 35 camcorder "converts the geospatial data received from the GPS receiver into clip geospatial metadata." ¶93 col. 12:50-67
and combining means for concatenating the individual discrete all-natural number... representations into a single discrete all-natural number geospatial coordinate measurement representation... The accused camcorder "formats the clip geospatial metadata into 330M Standard." ¶93 col. 12:39-44
  • Identified Points of Contention:
    • Scope Questions: A central dispute may be whether the data structure defined by the SMPTE 330M (UMID) standard, which the complaint alleges Panasonic products use, meets the definition of the "single discrete all-natural number geospatial coordinate measurement representation" required by the claims. The defense may argue that this claim language is limited to the patent's specific "GEOCode" embodiment (’286 Patent, Fig. 26), raising the question of whether the UMID format is structurally different.
    • Technical Questions: The infringement theory hinges on the allegation that the accused cameras perform the claimed "converting" and "concatenating" steps. A key technical question will be what evidence supports the assertion that the accused devices create a single concatenated numeric string, as claimed, rather than simply storing geospatial data as distinct fields within a standard metadata header. The complaint alleges conversion into the 330M standard, which may or may not be functionally and structurally identical to the process claimed in the patent (Compl. ¶93).

V. Key Claim Terms for Construction

  • The Term: "single discrete all-natural number geospatial coordinate measurement representation"

    • Context and Importance: This term appears in both asserted independent claims and defines the novel output format of the claimed invention. The outcome of the infringement analysis will likely depend on how this term is construed, specifically whether it is broad enough to read on the SMPTE UMID standard.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: Plaintiff may argue that the claim language is functional and should be read to cover any data format that combines location, altitude, and time data into a single, contiguous, numeric data block for machine processing, regardless of its precise internal structure.
      • Evidence for a Narrower Interpretation: The defense may argue that the specification provides a specific and detailed definition of this term through the "GEOCode" embodiment, which discloses a precise sequence, length, and format for the concatenated values. Practitioners may focus on the detailed diagram in Figure 26 and the accompanying description as evidence that the inventor defined the term with this specific structure in mind (’286 Patent, Fig. 26; col. 12:39-67).

  • The Term: "converting means"

    • Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112(f). Its scope is not limitless but is confined to the specific structures disclosed in the patent's specification that perform the claimed function, and their equivalents. Practitioners may focus on this term because its construction will strictly define the scope of infringing technology.
    • Intrinsic Evidence for Interpretation:
      • Function: The claimed function is "converting longitude and latitude... and altitude... representations into individual discrete all-natural number geographic coordinate and measurement representations" (’286 Patent, col. 13:60-67).
      • Corresponding Structure: The specification does not explicitly label a single component as the "converting means," but describes a "Geospatial Media Recorder (GMR)" that "uses specialized electronic circuitry" and an encoder to process geospatial data and place it onto a video frame (ʼ286 Patent, col. 9:15-28). The corresponding structure is therefore likely a processor or dedicated circuitry configured to execute the conversion algorithm detailed in the specification.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Panasonic induces infringement by its customers, including media resellers and end-users. The alleged inducing acts include advertising, promoting, and creating instructional materials (such as user manuals and training) that encourage and explain how to use the accused GPS location recording and data conversion features (Compl. ¶96).
  • Willful Infringement: The allegation of willfulness is supported by extensive factual claims of pre-suit knowledge. The complaint asserts that Panasonic was aware of the '286 Patent and its alleged relevance through years of licensing negotiations, which included Panasonic's execution of an MOU that acknowledged the patent portfolio, and continued to sell the accused products after those negotiations failed (Compl. ¶89, ¶99).

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

  • A core issue will be one of technical and definitional scope: Can the claim term "single discrete all-natural number... representation," which the patent specification links to a specific "GEOCode" structure, be construed to cover the industry-standard SMPTE UMID metadata format allegedly implemented in Panasonic’s products? The case may depend on whether the two formats are structurally and functionally equivalent.
  • A key legal question will concern the impact of the parties' history: How will the extensive record of pre-suit interactions—including the plaintiff's predecessor's RAND declarations to a standards body, the subsequent withdrawal of those declarations, and the executed-but-unfulfilled MOU—affect the court's analysis of infringement, willfulness, and any potential damages award?
  • An evidentiary question will be one of functional operation: What proof will be required to demonstrate that the accused Panasonic cameras perform the specific "converting" and "concatenating" functions as recited in the means-plus-function claims, rather than a more conventional method of storing metadata in separate data fields?