DCT
7:22-cv-10622
Onstream Media Corp v. Cloudvisit Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Onstream Media Corporation (Florida)
- Defendant: CloudVisit, Inc. (Delaware)
- Plaintiff’s Counsel: Daignault Iyer LLP
- Case Identification: 7:22-cv-10622, S.D.N.Y., 12/15/2022
- Venue Allegations: Venue is asserted based on Defendant maintaining a regular and established place of business within the Southern District of New York.
- Core Dispute: Plaintiff alleges that Defendant’s live streaming and remote inspection platform infringes nine patents related to remotely accessed audio and video stream recording, storage, and delivery systems.
- Technical Context: The technology at issue involves client-server systems for browser-based recording and sharing of live audio/video streams, a field significant for remote collaboration, inspection, and online business communications.
- Key Procedural History: The complaint indicates that all nine patents-in-suit descend from a common parent application filed in 2004 and share the same specification. This long prosecution history and shared specification may focus the dispute on the specific claim language adopted in each patent to cover evolving aspects of the technology.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-24 | Earliest Priority Date for all Patents-in-Suit |
| 2015-10-13 | U.S. Patent No. 9,161,068 Issued |
| 2016-10-11 | U.S. Patent No. 9,467,728 Issued |
| 2018-07-31 | U.S. Patent No. 10,038,930 Issued |
| 2019-02-05 | U.S. Patent No. 10,200,648 Issued |
| 2020-06-02 | U.S. Patent No. 10,674,109 Issued |
| 2020-06-23 | U.S. Patent No. 10,694,142 Issued |
| 2020-11-24 | U.S. Patent No. 10,848,707 Issued |
| 2021-03-16 | U.S. Patent No. 10,951,855 Issued |
| 2021-09-21 | U.S. Patent No. 11,128,833 Issued |
| 2022-12-15 | Complaint Filing Date |
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 describes a need to simplify online business communications, which had become burdened by increased complexity and extensive computer system requirements, thereby limiting broader user adoption (Compl. ¶20; ’930 Patent, col. 1:31-39).
- The Patented Solution: The invention is a system where audio and video recording functions are performed on a "host back end" server system, controlled by a user on a "user front end" via a standard Internet browser. This architecture removes the need for users to install specialized recording software or have extensive local storage, simplifying the process of creating and sharing video content (Compl. ¶23; ’930 Patent, col. 2:10-31). The system architecture is depicted in Figure 1 of the patent (’930 Patent, Fig. 1).
- Technical Importance: This client-server approach to recording aimed to lower the technical barrier for entry for users, making remote video communication more accessible for applications like online auctions and business transactions (Compl. ¶23).
Key Claims at a Glance
- The complaint asserts independent claims 1, 18, 35, and 48 (Compl. ¶73).
- The essential elements of independent claim 1, a method claim, include:
- Transmitting, from a host back end to a user front end, a platform-independent web application.
- The web application initiating the streaming of audio and video material from a receiving device on the user front end to the host back end as it is being captured.
- Recording the audio and video material on the host back end via the web application.
- Storing the recorded audio and video material as a complete video file.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 9,467,728 - “Remotely Accessed Virtual Recording Room,” Issued October 11, 2016
The Invention Explained
- Problem Addressed: The ’728 Patent shares its specification with the ’068 Patent and addresses the same technical problems related to the complexity of online video recording systems (Compl. ¶29).
- The Patented Solution: The solution is materially the same as that described for the ’068 Patent, focusing on a browser-based, host-centric recording architecture (Compl. ¶29; ’930 Patent, col. 2:10-31).
- Technical Importance: The technical importance is consistent with that of the ’068 patent family, centered on simplifying user access to video recording technology (Compl. ¶¶23, 29).
Key Claims at a Glance
The complaint asserts independent claims 1 and 21 (Compl. ¶88).
Independent claim 1 is similar to claim 1 of the ’068 Patent but adds steps related to sharing the recorded content:
- Transmitting a platform-independent web application that initiates streaming from a user front end to a host back end.
- Recording and storing the material on the host back end.
- Generating code associated with the recorded material to facilitate accessing it from an additional location.
- The content of the generated code depends on a type of code supported by the additional location.
The complaint does not explicitly reserve the right to assert dependent claims for this patent.
The following patents are presented in capsule format as they share a common specification with the lead patents.U.S. Patent No. 10,038,930 (“’930 Patent”), issued July 31, 2018, titled “Remotely Accessed Virtual Recording Room.”
- Technology Synopsis: The patent describes a method for browser-based recording where a backend server transmits a browser-independent recording application to a client device, which then executes in the browser to capture and stream media back to the server without requiring locally installed management software (Compl. ¶¶98-99).
- Asserted Claims: Independent claims 1 and 11 (Compl. ¶97).
- Accused Features: The CloudVisit System’s architecture of delivering a browser-executable application from its servers to a client device for recording (Compl. ¶98).
U.S. Patent No. 10,200,648 (“’648 Patent”), issued February 5, 2019, titled “Remotely Accessed Virtual Recording Room.”
- Technology Synopsis: The patent claims an Internet-based recording method where all recording functions are performed over a browser connection, with material originating at the user front end and being recorded and stored at the host back end (Compl. ¶¶105-106).
- Asserted Claims: Independent claims 1 and 18 (Compl. ¶104).
- Accused Features: The CloudVisit System’s method of using a browser connection to manage recording functions, where media is captured at the user end and stored on CloudVisit’s servers (Compl. ¶105).
U.S. Patent No. 10,674,109 (“’109 Patent”), issued June 2, 2020, titled “Remotely Accessed Virtual Recording Room.”
- Technology Synopsis: The patent covers a distributed recording system where a front-end device streams audio and video to a host back-end server system, with the material captured without using locally installed recording software and not stored as a complete file on the front-end device before streaming (Compl. ¶116).
- Asserted Claims: Independent claims 1, 2, and 26 (Compl. ¶112).
- Accused Features: The CloudVisit System’s client-server architecture that streams media in real-time from a user device to CloudVisit’s servers without prior local storage of the complete file (Compl. ¶116).
U.S. Patent No. 10,694,142 (“’142 Patent”), issued June 23, 2020, titled “Remotely Accessed Virtual Recording Room.”
- Technology Synopsis: The patent describes a method where, in response to a user interaction, a host back end delivers a code to the user front end to initiate streaming. A key aspect is that this code is delivered each time recording is initiated and is not pre-installed on the user's device (Compl. ¶123).
- Asserted Claims: Independent claims 1 and 20 (Compl. ¶121).
- Accused Features: The CloudVisit System’s alleged practice of delivering executable code on-demand to a user's browser to start a recording session (Compl. ¶123).
U.S. Patent No. 10,848,707 (“’707 Patent”), issued November 24, 2020, titled “Remotely Accessed Virtual Recording Room.”
- Technology Synopsis: The patent claims a method of receiving, at one or more host back-end servers, streamed digital audio and video from a front-end capturing device, where the capture occurs without locally installed recording software configured to save a complete file to local storage (Compl. ¶130).
- Asserted Claims: Independent claims 1, 9, and 17 (Compl. ¶129).
- Accused Features: The CloudVisit System’s functionality where users on front-end devices stream media to CloudVisit's servers without needing local recording software (Compl. ¶130).
U.S. Patent No. 10,951,855 (“’855 Patent”), issued March 16, 2021, titled “Remotely Accessed Virtual Recording Room.”
- Technology Synopsis: This patent focuses on a secure distributed recording system comprising an application configured to operate on a mobile front-end capturing device, which securely streams material to a host back-end server system using a real-time messaging protocol (Compl. ¶¶139, 140, 145).
- Asserted Claims: Independent claims 1, 15, 27, and 29 (Compl. ¶138).
- Accused Features: The CloudVisit System’s mobile application, which streams audio and video to its servers, allegedly using secure protocols (Compl. ¶¶140, 145).
U.S. Patent No. 11,128,833 (“’833 Patent”), issued September 21, 2021, titled “Remotely Accessed Virtual Recording Room.”
- Technology Synopsis: The patent describes a network-based recording method accomplished using only executable code delivered from the host back end to the user front end, in conjunction with a recording device on the user front end (Compl. ¶154).
- Asserted Claims: Independent claims 1, 10, and 21 (Compl. ¶151).
- Accused Features: The CloudVisit System’s browser-based functionality that allegedly relies on code delivered from its servers to initiate and manage recording on the user’s device (Compl. ¶154).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "CloudVisit Video Products and Services," which include specific offerings such as CloudVisit Remote Inspection, CloudVisit Premium, CloudVisit Plus, and CloudVisit Custom (Compl. ¶¶7-8). The complaint collectively refers to the hardware and software components as the "CloudVisit System" (Compl. ¶8).
Functionality and Market Context
- The CloudVisit System is a live streaming and broadcasting platform designed for remote inspection and collaboration (Compl. ¶7). It enables users on desktop browsers or mobile devices to conduct remote sessions, streaming live audio and video to CloudVisit's cloud-based servers (Compl. ¶¶74, 80). The complaint includes a visual describing how an inspector (host) and a participant (technician) can join and conduct a remote inspection using computers and mobile devices (Compl., p. 21). The system is alleged to record these sessions in real-time and store them as complete files on the back end, also providing features like timestamps, cloud-based data collection, and the ability to access and download inspection files and video recordings (Compl. ¶¶81, 82). A screenshot provided in the complaint shows a user interface for "Accessing inspection data," allowing participants to review or download files and the final video recording (Compl., p. 13). The platform is marketed for its ability to connect remote experts with onsite technicians for real-time collaboration (Compl., p. 19).
IV. Analysis of Infringement Allegations
’068 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An Internet-based recording method...comprising: transmitting, to the user front end from the host back end via a network, a platform-independent web application... | Servers of the CloudVisit System allegedly deliver a "browser-executable-code that is a browser independent recording application" to the user's device (Compl. ¶77). The complaint provides a visual stating "Desktop users can conduct sessions directly through their Chrome, Edge or Firefox browser" without needing to install software (Compl., p. 26). | ¶77 | col. 2:45-50 |
| wherein the web application initiates the streaming of audio and video material from a receiving device on the user front end to the host back end as it is being captured with the receiving device... | The CloudVisit System allegedly transmits a stream of audio and video material to its servers "as the audio and video material is being captured" rather than requiring transmission of a complete file from the user front end (Compl. ¶80). | ¶80 | col. 2:20-24 |
| recording the audio and video material on the host back end via the web application... | The accused system allegedly provides for "Inspection video recording: video feeds" where sessions are "recorded in real time to a secure cloud-based media server" (Compl., p. 14). | ¶74 | col. 2:20-22 |
| and storing the recorded audio and video material as a complete video file. | The complaint alleges that the CloudVisit System provides a method wherein "audio and video recordings are made and stored on the host back end as a complete file" (Compl. ¶81). | ¶81 | col. 2:24-25 |
’728 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An Internet-based recording method...transmitting...a platform-independent web application, wherein the web application initiates the streaming of audio and video material...to the host back end... | This functionality is alleged in the same manner as for the ’068 patent, where CloudVisit servers deliver a browser-executable application that initiates streaming (Compl. ¶90). | ¶90 | col. 2:45-50 |
| recording the audio and video material on the host back end via the web application and storing the recorded audio and video material as a complete video file; | This functionality is alleged in the same manner as for the ’068 patent, where the system records and stores the media stream on its back-end servers as a complete file (Compl. ¶91). | ¶91 | col. 2:20-25 |
| generating code associated with the recorded and stored audio and video material to facilitate accessing the recorded and stored audio and video material from an additional location... | The CloudVisit System allegedly generates code, such as a hyperlink, associated with the recording to facilitate access from another location (Compl. ¶¶92-93). | ¶92 | col. 2:32-35 |
| wherein the content of the generated code depends on a type of code supported by the additional location. | The complaint alleges that the content of the generated code depends on the type of code supported by the additional location where it will be used (Compl. ¶92). | ¶92 | col. 2:58-60 |
- Identified Points of Contention:
- Scope Questions: A central question for the court may be the construction of "platform-independent web application." The complaint uses this term interchangeably with "browser-executable-code" (Compl. ¶¶77, 90). The defense may argue that the specific scripts or code delivered by the CloudVisit system do not meet the technical definition of a "web application" as understood in the patent, potentially creating a non-infringement argument based on claim scope.
- Technical Questions: The allegation that streaming occurs "as it is being captured" (Compl. ¶80) versus a series of file uploads will likely be a point of technical dispute requiring discovery into the specific protocols used by the CloudVisit System. Further, the complaint's evidence consists primarily of marketing materials from the defendant's website. A key question will be whether the actual technical implementation of the CloudVisit System matches the functional descriptions in these materials and, in turn, the specific limitations of the asserted claims.
V. Key Claim Terms for Construction
The Term: "platform-independent web application" (’068 Patent, Claim 1)
- Context and Importance: This term defines the core software component delivered to the user. The infringement case for multiple patents depends on whether the browser-executable code delivered by CloudVisit's servers constitutes such an "application." Practitioners may focus on this term because its scope will determine if a wide range of browser-run scripts are covered or if it is limited to a more specific, self-contained software entity.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification's emphasis on avoiding the need for users to install "additional custom software application" or "plug in[s]" could support a broad interpretation that includes any browser-executable code that provides the claimed recording functionality without separate installation by the user (’930 Patent, col. 6:1-5).
- Evidence for a Narrower Interpretation: The patent abstract's distinct identification of "recording software 20" and a "user interface 50" could suggest that the "web application" is a substantial, integrated piece of software, not merely a simple script. A defendant may argue that this implies a more complex structure than what is delivered by the accused system (’930 Patent, Abstract).
The Term: "recording the audio and video material on the host back end via the web application" (’068 Patent, Claim 1)
- Context and Importance: This limitation defines the relationship between the client-side application and the server-side recording function. The infringement analysis may turn on whether the accused system's recording process is controlled "via" the web application in the manner claimed.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes a system where the "user interface further enables the user to record audio and video material...by activating the recording software residing on the host back end" (’930 Patent, col. 2:28-31). This could be interpreted broadly to mean any system where user actions in the browser application trigger recording on the server.
- Evidence for a Narrower Interpretation: A defendant may argue that "via the web application" requires a specific command-and-control relationship where the application is actively involved in the recording process itself, beyond merely initiating a stream that the server independently records. The complaint does not provide sufficient detail for analysis of the specific technical link between the client-side code and the server-side recording process.
VI. Other Allegations
- Indirect Infringement: The complaint includes a conclusory allegation of "direct indirect infringement" for U.S. Patent No. 10,694,142 (Compl. ¶127), but does not plead specific facts to support the elements of inducement or contributory infringement, such as pre-suit knowledge of the patent or intent to cause infringement by third parties. The primary focus of the complaint is on direct infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "platform-independent web application," as used in the patents, be construed to cover the specific browser-executable code delivered by the CloudVisit system, or will claim construction limit the term to a more substantial software architecture that differs from the accused product?
- A key evidentiary question will be one of functional operation: does the CloudVisit system's method of transmitting media from a client's browser to its servers for recording constitute "streaming...as it is being captured" and recording "via the web application" as required by the claims, or does it operate via a technically distinct method that falls outside the patent's scope? The resolution will likely depend on technical evidence beyond the marketing materials cited in the complaint.