Rothschild Patent Imaging LLC v. Parrot Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Rothschild Patent Imaging, LLC (Texas)
  • Defendant: Parrot, Inc. (New York)
  • Plaintiff’s Counsel: Kizzia Johnson, PLLC; Zimmerman Law Group
• Case Identification: 1:18-cv-00847, S.D.N.Y., 01/31/2018
• Venue Allegations: Venue is alleged to be proper because the Defendant, Parrot, Inc., is a New York corporation and is therefore deemed to reside in the district for purposes of patent venue.
• Core Dispute: Plaintiff alleges that Defendant’s consumer drones and associated mobile application infringe patents related to systems for wirelessly distributing digital images between a capturing device and a receiving device based on pre-defined criteria.
• Technical Context: The technology concerns methods for real-time, selective sharing of digital photos between nearby devices, a key feature in consumer electronics like smart cameras and drones that interface with smartphones.
• Key Procedural History: U.S. Patent No. 8,437,797 is a continuation of the application that resulted in U.S. Patent No. 8,204,437 and was filed with a terminal disclaimer. This procedural link suggests the patents share a common specification and that the patentable life of the ’797 patent is tied to that of the earlier ’437 patent.

Case Timeline

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’s background describes the difficulty and delay individuals face when trying to share digital photos taken at a common event, such as a wedding or party, noting that methods like email or web uploads are often cumbersome and not instantaneous (’797 Patent, col. 1:44-65).
• The Patented Solution: The invention describes an "image-capturing mobile device" that receives a plurality of images, filters them using a "transfer criteria," and transmits the filtered images to a second mobile device. Critically, the image-capturing device can also receive the transfer criteria from the second device, allowing the recipient to define what images it wants to receive (’797 Patent, col. 16:1-15). The specification explains this allows for selective communication based on criteria like the image's subject matter or geographic location where it was captured (’797 Patent, col. 9:25-46).
• Technical Importance: The technology aimed to automate and streamline the process of photo sharing between devices for groups of people in real-time, based on shared context or interest (’797 Patent, col. 1:44-55).

Key Claims at a Glance

• The complaint asserts independent Claim 6 and dependent Claim 7 (Compl. ¶13).
• Independent Claim 6 requires:
  • An image-capturing mobile device comprising a wireless receiver, a wireless transmitter, and a processor.
  • The processor is configured to perform several steps:
    • receiving a plurality of photographic images;
    • filtering the plurality of photographic images using a transfer criteria;
    • transmitting, via the wireless transmitter and to a second mobile device, the filtered plurality of photographic images; and
    • receiving, via the wireless receiver and from the second mobile device, the transfer criteria.

U.S. Patent No. 8,204,437 - “Wireless Image Distribution System and Method,” issued June 19, 2012

The Invention Explained

• Problem Addressed: The patent identifies the same problem as its continuation: the lack of an efficient system for "instantaneous, automatic, and/or selective distribution of images" between different devices used by individuals at a common location or event (’437 Patent, col. 1:44-65, col. 2:3-7).
• The Patented Solution: The invention proposes a system comprising at least one "capturing device" and one "receiving device" that can establish a "communicative relation" over a wireless network. The core of the solution is that these devices can enter into a "selectively paired relationship" based on "common pre-defined pairing criteria," one of which is the "geographic location" of the capturing device (’437 Patent, Abstract; col. 13:1-24). This pairing allows for the automated or selective transfer of images between the devices.
• Technical Importance: This framework provides a method for devices to discover and securely connect with each other based on shared context, such as being in the same physical place, to facilitate seamless image sharing (’437 Patent, col. 2:20-27).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶30).
• Independent Claim 1 requires:
  • A system with at least one capturing device and at least one receiving device, disposable in a communicative relation via a wireless network.
  • The capturing device has a capture assembly and a first network component.
  • The receiving device has a second network component to receive images.
  • The devices are disposed in a "selectively paired relationship with one another."
  • This relationship is based on the devices being "cooperatively associated with at least one common pre-defined pairing criteria."
  • The "pre-defined pairing criteria comprises a geographic location of said capturing device."

III. The Accused Instrumentality

Product Identification

• The accused products are the Parrot BEBOP 2 video drone and the associated FreeFlight Pro mobile application ("the Product") (Compl. ¶14, ¶31).

Functionality and Market Context

• The Parrot BEBOP 2 is a consumer drone equipped with a camera capable of capturing high-definition photos and videos (Compl. ¶15, ¶17). It includes a processor and a Wi-Fi module for wireless communication (Compl. ¶16). A screenshot of the product's technical specifications lists a "Dual core processor with quad-core GPU" and "Wi-Fi 802.11a/b/g/n/ac" capability (Compl. p. 4).
• The drone is operated via the FreeFlight Pro app installed on a second device, such as a smartphone (Compl. ¶15). This connection is established by pairing the smartphone to the drone's Wi-Fi network (Compl. ¶21). A screenshot from a user manual illustrates the steps for "Connecting a smartphone" to the drone's Wi-Fi network (Compl. p. 5).
• Through the app, a user can view a live video stream from the drone, capture images, and receive the captured images on their smartphone (Compl. ¶18, ¶19). The complaint alleges that the user can select particular image frames from the live stream to save as stills, which are then transmitted from the drone to the phone (Compl. ¶18).

IV. Analysis of Infringement Allegations

’797 Patent Infringement Allegations

’437 Patent Infringement Allegations

Identified Points of Contention

• Technical Questions (’797 Patent): The infringement theory for the ’797 patent raises a question about the sequence and location of the claimed functions. Claim 6 requires the processor on the image-capturing device (the drone) to perform the "filtering" after "receiving" the "transfer criteria" from the second mobile device (the smartphone). It is a question for the court whether a user's real-time command on an app to "take a photo now" from a live stream constitutes the drone "receiving a transfer criteria" and then "filtering" a "plurality of images," or if this describes a different technical operation.
• Scope Questions (’437 Patent): The central dispute for the ’437 patent may involve the meaning of "geographic location" as a "pre-defined pairing criteria." The complaint equates this with being within the functional signal range of a Wi-Fi network. However, the patent specification also explicitly discusses using Global Positioning System ("GPS") data to encode the geographic location where an image was captured (’437 Patent, col. 6:41-43). This raises the question of whether "geographic location" requires specific coordinate data (e.g., from GPS) or if it can be interpreted more broadly to mean a proximate area defined by wireless signal strength.

V. Key Claim Terms for Construction

• Term: "pre-defined pairing criteria comprises a geographic location of said capturing device" (’437 Patent, Claim 1)

  • Context and Importance: This term is critical to the ’437 patent infringement allegation. The viability of the claim depends on whether the accused system's operational requirement to be "within Wi-Fi signal range" falls within the legal scope of "a geographic location" as a pairing criterion.
  • Intrinsic Evidence for a Broader Interpretation: The specification discusses devices being disposed in a "proximate relation" as a condition for communication, which may support an argument that being within a limited wireless range is a form of geographic pairing (’437 Patent, col. 8:38-40).
  • Intrinsic Evidence for a Narrower Interpretation: The specification explicitly describes a "locational module, including, but not limited to a Global Positioning System ('GPS'), structured to encode the geographic location of the capturing device" (’437 Patent, col. 6:49-53). This explicit linkage to GPS could support a narrower construction requiring specific coordinate-based location data, not just signal proximity.

• Term: "filtering the plurality of photographic images using a transfer criteria" (’797 Patent, Claim 6)

  • Context and Importance: Practitioners may focus on this term because the infringement theory equates a user's manual selection of a still frame from a video feed with the claimed automated "filtering" process. The distinction between a reactive user command and a pre-defined, rule-based filtering operation is central.
  • Intrinsic Evidence for a Broader Interpretation: The patent states that the transfer criteria can be used to "selectively" communicate images, which could be argued to encompass a user's ad-hoc selection (’797 Patent, col. 6:11-16).
  • Intrinsic Evidence for a Narrower Interpretation: The patent provides examples of filtering such as a device programmed to "communicate images 25 of the Empire State Building to a receiving device 30 having a device name 'Bob'" (’797 Patent, col. 9:55-63). This suggests a pre-configured, automated rule set, which may differ from a user manually selecting images from a live stream in real time.

VI. Other Allegations

• Indirect Infringement: The complaint focuses on direct infringement by alleging the accused products, as sold and used, meet all limitations of the asserted claims (Compl. ¶13, ¶30). The complaint does not provide sufficient detail for analysis of specific facts supporting induced or contributory infringement.
• Willful Infringement: The complaint does not contain an explicit allegation of willful infringement.

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

• A core issue will be one of definitional scope: can the term "geographic location," which the patent specification links to specific GPS data, be construed to cover the accused product's functional requirement of simply being within the operational range of a Wi-Fi signal?
• A key question will be one of operational interpretation: does the accused system—in which a user on a smartphone manually commands a drone to capture a still image from a live video feed—perform the specific sequence of steps recited in Claim 6 of the ’797 patent, namely the drone's processor "receiving" a "transfer criteria" and then "filtering" images based on it?
• A third question relates to the procedural history: given that the ’797 patent is a terminally-disclaimed continuation of the ’437 patent, the court may examine whether the claims of the later patent are patentably distinct from those of the earlier patent, which could raise issues of obviousness-type double patenting.