DCT
2:17-cv-05915
Rothschild Patent Imaging LLC v. Slomin's Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothschild Patent Imaging LLC (Texas)
- Defendant: Slomin's, Inc. (New York)
- Plaintiff’s Counsel: Watson LLP
- Case Identification: 2:17-cv-05915, E.D.N.Y., 10/10/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is deemed to reside in the district, has committed acts of infringement there, and maintains a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s wireless home security cameras and associated mobile application infringe three patents related to systems and methods for filtering and distributing digital images between paired wireless devices.
- Technical Context: The technology concerns the wireless transmission of selected digital images between an image-capturing device and a second device, using criteria to filter which images are sent.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2008-08-08 | Earliest Priority Date ('797, '722, and '437 Patents) |
| 2012-06-19 | U.S. Patent No. 8,204,437 Issued |
| 2013-05-07 | U.S. Patent No. 8,437,797 Issued |
| 2013-11-26 | U.S. Patent No. 8,594,722 Issued |
| 2017-10-10 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,437,797 - Wireless Image Distribution System and Method
(Issued May 7, 2013)
The Invention Explained
- Problem Addressed: The patent identifies the frustration and delay associated with sharing digital photographs among groups of people at events like weddings or parties, noting that methods like email or uploading to web services are often not instantaneous or ideal (’797 Patent, col. 2:1-8).
- The Patented Solution: The invention describes an "image-capturing mobile device" with a processor configured to filter a plurality of images using a "transfer criteria" and transmit only the filtered images to a second mobile device. A key aspect is that the capturing device can also receive the transfer criteria from the second device, enabling a user of the second device to remotely select which images they want to receive (’797 Patent, col. 4:26-40; col. 16:5-9).
- Technical Importance: The technology enables a user to remotely pull specific images from a camera to their own device, streamlining the sharing process beyond simple broadcasting of all captured images (’797 Patent, col. 2:8-13).
Key Claims at a Glance
- The complaint asserts independent claim 6 (Compl. ¶13).
- Essential elements of claim 6 include: (a) a wireless receiver and transmitter; (b) a processor that receives a plurality of photographic images; (c) the processor filters the images using a transfer criteria; (d) the processor transmits the filtered images to a second mobile device; and (e) the processor receives the transfer criteria from the second mobile device.
- The complaint reserves the right to assert additional claims (Compl. ¶13).
U.S. Patent No. 8,594,722 - Wireless Image Distribution System and Method
(Issued November 26, 2013)
The Invention Explained
- Problem Addressed: Similar to its parent, the patent addresses the need for a more efficient way to distribute digital images between devices than manual uploads or emails (’722 Patent, col. 2:1-8).
- The Patented Solution: This invention adds a specific mechanism for connecting devices. It discloses a system where the image-capturing device and a second mobile device are put into a "selectively paired relationship" that is "based upon a geographic location of at least one of the plurality of photographic images." This allows devices to pair based on the geographic context of the images being captured, not just user pre-selection (’722 Patent, Abstract; col. 13:1-7).
- Technical Importance: Tying the device pairing to the geographic location of the captured content automates the creation of relevant communication links, a foundational concept for location-aware applications and services (’722 Patent, col. 6:58-61).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 5 (Compl. ¶29).
- Essential elements of claim 1 include: (a) a wireless receiver, transmitter, and processor; (b) the processor receives, filters, and transmits photographic images; (c) wherein the image-capturing device and a second mobile device are in a selectively paired relationship "based upon a geographic location of at least one of the plurality of photographic images."
- Claim 5 recites a similar method.
- The complaint reserves the right to assert additional claims (Compl. ¶29).
U.S. Patent No. 8,204,437 - Wireless Image Distribution System and Method
(Issued June 19, 2012)
Technology Synopsis
This patent, the parent of the other two patents-in-suit, discloses a system for distributing digital images between a "capturing device" and a "receiving device" over a wireless network. The core inventive concept is that the devices are placed in a "selectively paired relationship" based on "common pre-defined pairing criteria," which the specification states can include a geographic location (’437 Patent, Abstract; col. 6:64-col. 7:6).
Asserted Claims
The complaint asserts independent claim 1 (Compl. ¶46).
Accused Features
The complaint alleges that the Slomin's camera (capturing device) and the MyShield app (receiving device) are paired based on a "pre-defined pairing criterion," namely the geographic location of the user's home associated with their account (Compl. ¶¶55-56).
III. The Accused Instrumentality
Product Identification
The accused products are "Slomin's home monitoring cameras and the MyShield app, and any similar devices" (collectively, the "Product") (Compl. ¶14, 30, 47).
Functionality and Market Context
- The system comprises a wireless security camera that records video, which the complaint characterizes as a "plurality of photographic images" (Compl. ¶¶17, 33).
- A user operates the system through the "MyShield app" on a smartphone or tablet (Compl. ¶¶19, 35). The complaint alleges a user can "tap a snapshot icon" on the app to select specific video frames to be saved and transmitted from the camera system to the user's mobile device (Compl. ¶¶18, 34). This user selection is alleged to be the "transfer criterion" (Compl. ¶18).
- The camera and the app are alleged to be associated through a common user account that is "tied to a particular location where the image capturing device is located (e.g., the user's home)" (Compl. ¶36). This location-based association is alleged to constitute the claimed "selectively paired relationship" (Compl. ¶¶36, 54-56).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'797 Patent Infringement Allegations
| Claim Element (from Independent Claim 6) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An image-capturing mobile device, comprising a wireless receiver; [and] a wireless transmitter; | The accused Product is a mobile security camera which includes a Wi-Fi receiver and a Wi-Fi transmitter. | ¶15 | col. 4:54-61 |
| a processor operably connected to the wireless receiver and the wireless transmitter... | The wireless camera is connected to a server which contains a processor. | ¶16 | col. 4:20-24 |
| ...wherein the processor is configured to... receiving a plurality of photographic images; | The camera records video, where each frame is a photographic image, which is received by the processor. | ¶17 | col. 4:26-27 |
| filtering the plurality of photographic images using a transfer criteria; | A user taps a snapshot icon in the MyShield app, which acts as the transfer criterion to select frames. | ¶18 | col. 10:25-34 |
| transmitting, via the wireless transmitter..., the filtered plurality of photographic images; | The processor sends the user-selected snapshot images to a smartphone running the MyShield app. | ¶19 | col. 10:7-14 |
| and receiving, via the wireless receiver and from the second mobile device, the transfer criteria. | The processor receives the transfer criteria (the user's selection via the app) from the second mobile device. | ¶20 | col. 16:5-9 |
Identified Points of Contention
- Scope Questions: A primary question is whether a security camera, often installed in a fixed location, constitutes a "mobile device" as described in a patent whose background focuses on sharing photos at social events (’797 Patent, col. 1:45-51). Another question is whether the camera's processor is part of the "mobile device" when the complaint alleges it resides on a server (Compl. ¶16).
- Technical Questions: The infringement theory hinges on the user pulling an image via the app. A technical question is whether this action constitutes the camera's processor "filtering" the images, or if it is merely responding to a direct command to transmit a specific, pre-identified frame. The sequence of operations and the location where the filtering logic is executed will be critical.
'722 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An image-capturing mobile device, comprising a wireless receiver; [and] a wireless transmitter; | The accused Product is a mobile security camera which includes a Wi-Fi (802.11 b/g/n) receiver and transmitter. | ¶31 | col. 4:54-61 |
| a processor... configured to... receiving a plurality of photographic images; [and] filtering the plurality of photographic images... | The camera records video (a plurality of images), and the processor filters frames based on a user tapping a snapshot icon in the app. | ¶33-34 | col. 9:25-43 |
| and transmitting... the filtered plurality of photographic images... wherein | The processor sends the selected images to the user's smartphone with the MyShield app. | ¶35 | col. 5:2-6 |
| the image-capturing mobile device and the second mobile device are disposed in a selectively paired relationship... based upon a geographic location... | The camera and app are associated with a user account tied to the user's home, and the pairing is alleged to be based on the camera's location. | ¶36 | col. 13:1-7 |
Identified Points of Contention
- Scope Questions: The central dispute for this patent will likely concern the phrase "based upon a geographic location of at least one of the plurality of photographic images." The complaint alleges this is met because the devices are paired via a user account tied to a fixed home address (Compl. ¶36). This raises the question of whether a pre-configured account address satisfies the claim, or if the claim requires the pairing logic to actively use geographic data from a specific image to establish the connection.
V. Key Claim Terms for Construction
The Term: "filtering the plurality of photographic images using a transfer criteria"
(’797 Patent, Claim 6)
- Context and Importance: This term is central to the infringement analysis for the '797 Patent. The case may turn on whether a user on a smartphone app tapping an icon to request a specific image from a camera constitutes the camera's processor "filtering" as claimed, or if it is a different technical operation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes "transfer criteria" very broadly to include "object recognition, locational information, time, date, image name, etc." (’797 Patent, col. 2:32-35), which could support an argument that any user-defined selection rule qualifies as a transfer criterion.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the "capturing device" as the agent performing the filtering (e.g., "the capturing device 20 is structured to filter the digital photographic image(s) 25," ’797 Patent, col. 9:25-27). This may support a narrower construction requiring the filtering logic to reside and be executed on the capturing device itself, rather than being a simple response to a command from a second device.
The Term: "selectively paired relationship... based upon a geographic location of at least one of the plurality of photographic images"
(’722 Patent, Claim 1)
- Context and Importance: The viability of the infringement claim for the ’722 Patent depends entirely on the construction of this phrase. Practitioners may focus on this term because the plaintiff's theory relies on a user's pre-set home address in an account profile satisfying a limitation that appears to tie pairing to the data of an actual image.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification notes that pairing criteria can include "geographic location where the image 25 was captured" (’722 Patent, col. 7:4-6). Plaintiff may argue this covers a fixed security camera location where all images are captured.
- Evidence for a Narrower Interpretation: The claim language ties the pairing to the "location of at least one of the plurality of photographic images," not just the location of the device. The specification also describes a "locational module" to "encode the geographic location... during the capture of each digital photographic image" (’722 Patent, col. 6:58-61). This suggests the pairing is meant to be dynamic and based on the metadata of a specific image, not a static, pre-configured account address.
VI. Other Allegations
Indirect Infringement
The complaint makes general allegations of infringement through employees or others under Defendant's control testing the system (Compl. ¶13, 29, 46). However, the complaint does not provide sufficient detail for analysis of indirect infringement theories such as inducement or contributory infringement, as it does not plead specific facts regarding intent, knowledge, or instructions provided to end-users.
Willful Infringement
This section is not applicable as the complaint does not allege willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can a stationary home security camera system, where a user on a smartphone pulls a specific image, be construed to meet the patent claims for a "mobile device" that actively "filters" and pushes images, as described in a patent family originally focused on peer-to-peer social sharing?
- A key question of claim construction will be: does pairing a camera and an app via a user account pre-configured with a home address satisfy the requirement for a "selectively paired relationship... based upon a geographic location of at least one of the plurality of photographic images," or does the claim require the pairing logic to actively use geographic data from a specific image itself to establish the connection?