Onstream Media Corp v. CafeX Communications Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Onstream Media Corporation (Florida)
  • Defendant: CafeX Communications Inc. (Delaware)
  • Plaintiff’s Counsel: Daignault Iyer LLP
• Case Identification: 2:22-cv-06320, E.D.N.Y., 10/19/2022
• Venue Allegations: Venue is alleged to be proper as Defendant has a place of business in New York and has allegedly committed acts of patent infringement within the judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s live streaming and broadcasting platform infringes six patents related to browser-based, server-side audio and video recording and delivery systems.
• Technical Context: The technology relates to cloud-based or server-side media recording, which allows users to capture and store audio/video streams without requiring specialized software or significant storage on their local devices.
• Key Procedural History: The complaint notes that all six patents-in-suit share the same specification, suggesting a focus on a common technological disclosure with variations in claim scope across the patent family.

Case Timeline

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

U.S. Patent No. 9,161,068 - “Remotely Accessed Virtual Recording Room”

• Issued: October 13, 2015

The Invention Explained

• Problem Addressed: The patent’s background section describes a need for online business communication systems that are simple, efficient, and do not have "extensive computer system requirements" (Compl. ¶18; ’068 Patent, col. 1:45-52). It notes that new systems often increase complexity, which can be a barrier to attracting new users (Compl. ¶16; ’068 Patent, col. 1:31-39).
• The Patented Solution: The invention is an Internet-based system where audio and video originate on a user's device (the "user front end") but are streamed to and recorded on a remote server (the "host back end") (Compl. ¶¶ 52, 58; ’068 Patent, col. 2:3-9). This architecture is intended to remove the need for recording software or specialized hardware on the user's device (Compl. ¶19; ’068 Patent, col. 2:21-25). The system can then generate code that allows the remotely-stored recording to be accessed from another location, such as an auction website (’068 Patent, Abstract).
• Technical Importance: This server-side recording architecture aimed to simplify the process of creating and sharing video content for non-technical users by centralizing the recording and storage functions remotely (Compl. ¶19).

Key Claims at a Glance

• The complaint asserts independent claim 1, as well as claims 18, 35, and 48 (Compl. ¶51).
• Independent Claim 1 (Method):
  • Recording audio and video material over an Internet browser connection, where the material originates on a user front end and is recorded on a host back end without requiring recording functionality on the user front end.
  • Storing the recorded material on the host back end.
  • Providing access to the recorded material.
• The complaint does not explicitly reserve the right to assert additional dependent claims.

U.S. Patent No. 10,200,648 - “Remotely Accessed Virtual Recording Room”

• Issued: February 5, 2019

The Invention Explained

• Problem Addressed: The ’648 patent shares the same specification as the ’068 patent and addresses the same technical problems related to the complexity and system requirements of prior art audio and video recording systems (Compl. ¶25).
• The Patented Solution: The patented solution is a system and method for remotely recording, storing, and delivering audio/video streams over an Internet browser connection without requiring recording functionality on the user’s device (’648 Patent, Abstract; ’648 Patent, col. 2:3-25). The system is described as providing a "virtual recording room" accessible to a user at a "user front end" for activating recording software located at a "host back end" (’648 Patent, col. 2:18-23).
• Technical Importance: The technology sought to lower the barrier to entry for creating and distributing online video content by shifting technical burdens from the user's device to a remote server infrastructure (Compl. ¶19).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 18 (Compl. ¶66).
• Independent Claim 1 (Method):
  • Performing audio and video recording functions over an Internet browser connection between a user front end and a host back end.
  • Recording material that originates on the user front end and is recorded on the host back end without requiring recording functionality on the user front end.
  • Storing the recorded material on the host back end.
  • Generating code associated with the stored material to facilitate access.
  • Enabling the generated code to be copied and pasted to an additional location, where activating the code provides access to the material.
• Independent Claim 18 (System):
  • Recording software located on a host back end that processes and records audio/video material originating from a user front end.
  • Storage on the host back end for the recorded material.
  • An interface that provides a user with access to a virtual recording room and enables recording by activating the host back end software without requiring recording functionality on the user front end.
  • A code generator that produces code associated with the recorded material.
• The complaint does not explicitly reserve the right to assert additional dependent claims.

U.S. Patent No. 10,694,142 - “Remotely Accessed Virtual Recording Room”

• Issued: June 23, 2020
• Technology Synopsis: The patent, which shares a specification with the lead patents, describes a method for recording audio and video over the internet. The method involves a host back end delivering a non-installed, executable code to a user front end to initiate streaming from the user's capturing devices to the host back end for recording (’142 Patent, col. 8:54-67).
• Asserted Claims: Independent claims 1 and 20 (Compl. ¶74).
• Accused Features: The complaint alleges that the CafeX System infringes by delivering a first code from its host back end that is executed at the user front end to initiate streaming of audio and video, without said code being installed on the user device (Compl. ¶76).

U.S. Patent No. 10,848,707 - “Remotely Accessed Virtual Recording Room”

• Issued: November 24, 2020
• Technology Synopsis: This patent describes a method for receiving streamed digital audio/video at a host server from a front-end capturing device. A key aspect is that the material is captured without requiring the local installation of recording software on the front end device that would record the material as a complete file to local storage (’707 Patent, col. 16:45-56). The recorded stream is stored as a sequential file, and a URL pointer is generated for access.
• Asserted Claims: Independent claims 1, 9, and 17 (Compl. ¶82).
• Accused Features: The CafeX system is accused of infringing by receiving streamed media at its host servers from a user's device without requiring local recording software, remotely recording it as a file, and generating a URL for access (Compl. ¶¶ 83-85).

U.S. Patent No. 10,951,855 - “Remotely Accessed Virtual Recording Room”

• Issued: March 16, 2021
• Technology Synopsis: This patent is directed to a secure, distributed recording system comprising a mobile application and a host back end. The host delivers a "stream number" to the application, which then initiates secure streaming to the host server for recording, without the material first being stored as a complete file on the mobile device (’855 Patent, Abstract; Claim 1).
• Asserted Claims: Independent claims 1, 15, 27, and 29 (Compl. ¶91).
• Accused Features: The complaint alleges infringement by the CafeX System's mobile applications ("CaféX Meetings" and "Challo"), which allegedly operate with host back end servers to securely stream and record audio/video material as claimed (Compl. ¶¶ 92-100).

U.S. Patent No. 11,128,833 - “Remotely Accessed Virtual Recording Room”

• Issued: September 21, 2021
• Technology Synopsis: The patent describes a network-based recording and delivery method where recording is performed at a host back end using only executable code delivered to the user front end. The system stores the recording at the host back end and generates code that can be activated at an additional location to provide access to the stored media (’833 Patent, Abstract; Claim 1).
• Asserted Claims: Independent claims 1, 10, and 21 (Compl. ¶104).
• Accused Features: The CafeX System is accused of infringing by providing a network-based recording method using executable code delivered to the user, storing the recording on its back end, and generating code for subsequent access (Compl. ¶¶ 105-111).

III. The Accused Instrumentality

• Product Identification: The accused instrumentalities are the "CafeX Products and Services" and the "CafeX System," which include the "Challo" live streaming and broadcasting platform (Compl. ¶¶ 6-7, p. 10).
• Functionality and Market Context: The complaint describes the accused system as a "pure-browser solution" that enables voice and video communication directly from a web browser with "just one click" (Compl. ¶¶ 55, 61; Compl. p. 10). A screenshot from Defendant's website advertises the ability to "[e]mbed voice & video for seamless communication on any device" (Compl. p. 10). The system provides for recording meetings, which are then stored and made accessible for playback (Compl. ¶¶ 59-60; Compl. p. 11). The complaint also identifies mobile applications for Android and iOS, named "CaféX Meetings" and "Challo" respectively, as components of the accused system (Compl. ¶¶ 93, 94; Compl. pp. 33-34). A screenshot of the "CaféX Meetings" app on the Google Play store indicates it allows users to "[c]onnect with guests, customers and teams more easily from anywhere" (Compl. p. 33).

IV. Analysis of Infringement Allegations

’068 Patent Infringement Allegations

’648 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The case may turn on the interpretation of the phrase "without requiring recording functionality on the user front end." A question for the court will be whether this phrase, originating from a 2004 priority date, can be read to cover modern browser-based systems that use native browser APIs (such as WebRTC) to access a user's camera and microphone, as opposed to requiring separate, installable plugins or software applications.
• Technical Questions: What evidence does the complaint provide that the accused product "generat[es] code" that is "copied and pasted to an additional location" as required by claim 1 of the ’648 patent? The complaint alleges this functionality generally (Compl. ¶¶ 69-70), but the specific mechanism by which the accused Challo platform generates and enables the use of such embeddable code for third-party sites remains a factual question for discovery.

V. Key Claim Terms for Construction

• The Term: "without requiring recording functionality on the user front end" (from ’068 Patent, Claim 1; ’648 Patent, Claim 1)
• Context and Importance: The construction of this term is central to the dispute. The Defendant may argue that a modern browser equipped with APIs to access a device's camera and microphone inherently possesses "recording functionality," thus placing the accused browser-based system outside the scope of the claims. The Plaintiff may counter that the term, in the context of the patent, refers to the absence of custom, installable software applications dedicated to recording.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification's background criticizes prior art systems that "result in increased intellectual complexity and/or increased computer system requirements" and require users to "install and burden front end computer and electronic devices with additional software" (’648 Patent, col. 1:48-52; Compl. ¶19). This language may support an interpretation that "recording functionality" refers to externally installed software, not native browser capabilities.
  • Evidence for a Narrower Interpretation: The abstract states the invention is "accomplished without requiring recording functionality on the user front end" immediately after describing a system where a user activates remote recording software via a user interface (’648 Patent, Abstract). This could be interpreted to mean the user device itself performs no recording logic, a distinction that may become critical depending on how browser APIs are characterized.

VI. Other Allegations

The complaint does not contain specific factual allegations supporting indirect or willful infringement.

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

• A core issue will be one of definitional scope: can the claim limitation "without requiring recording functionality on the user front end," which originates from a 2004 priority date, be construed to cover a modern "pure-browser" system that leverages native browser APIs to access a user's camera and microphone, or is it limited to systems that avoid the installable plugins common in that era?
• A second key issue will be one of technological evolution: does the operation of the accused system—which includes both browser-based access and dedicated mobile applications—align with the specific architecture described in the patents, particularly concerning the sequence of streaming, remote recording, and subsequent generation of access codes for playback?