DCT
6:18-cv-03119
Imagequix LLC v. Snapizzi Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ImageQuix, LLC (South Carolina)
- Defendant: Snapizzi, Inc. (Washington) and Snapizzi International Licensing Operations, LLC
- Plaintiff’s Counsel: Douglas Kim Law Firm, LLC
- Case Identification: 6:18-cv-03119, D.S.C., 11/19/2018
- Venue Allegations: Plaintiff ImageQuix asserts venue is proper because Defendant Snapizzi allegedly does business in South Carolina and, under TC Heartland, any infringement suit by Snapizzi against the South Carolina-based ImageQuix would be proper in this district.
- Core Dispute: This is a declaratory judgment action in which Plaintiff seeks a court ruling that U.S. Patent No. 8,794,506 is invalid and not infringed by Plaintiff's products, following a series of letters from Defendant inviting Plaintiff to license the patent.
- Technical Context: The technology concerns the automation of workflows for high-volume photography, such as school or event photography, by using coded markers in photographs to automatically sort and group large sets of images.
- Key Procedural History: The dispute arises from a series of communications initiated by Defendant in September 2018, which Plaintiff characterizes as a threat of patent infringement. Plaintiff’s primary defense is a claim of invalidity, alleging its own "IQ6" software, publicly used since 2003, constitutes invalidating prior art. The complaint also raises questions regarding the Defendants' ownership of the patent and standing to enforce it at the time the communications were sent.
Case Timeline
| Date | Event |
|---|---|
| 2003-01-01 | Plaintiff alleges its IQ6 software was first released (approximate date) |
| 2009-02-23 | '506 Patent Priority Date |
| 2012-09-18 | Snapizzi-Delaware (a predecessor entity) filed for bankruptcy |
| 2014-08-05 | '506 Patent Issue Date |
| 2018-08-03 | Snapizzi, Inc. allegedly acquired the '506 Patent |
| 2018-09-07 | Defendant sent first letter to Plaintiff regarding the '506 Patent |
| 2018-09-20 | Snapizzi Licensing allegedly acquired the '506 Patent |
| 2018-11-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,794,506 - System for Automatic Image Association, issued August 5, 2014
The Invention Explained
- Problem Addressed: The patent addresses the operational challenges faced by professional photographers in managing and sorting large quantities of digital images from different jobs or clients. This manual sorting process is described as time-consuming and lacking automation. (’506 Patent, col. 1:15-27).
- The Patented Solution: The invention proposes a method where a photographer captures an image of a "coded component" (e.g., a card with a barcode) which serves as a machine-readable delimiter for a specific photography job. This coded photograph, when uploaded with the rest of the images from the job, allows a data processing system to automatically identify and group all related photographs, thereby automating the sorting process. (’506 Patent, Abstract; col. 2:57-65).
- Technical Importance: This approach aimed to automate a significant business-side bottleneck for high-volume photographers, reducing manual labor and potential sorting errors while also providing a mechanism for enhanced client privacy and access. (’506 Patent, col. 1:36-42).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of "any claims" of the '506 Patent (Compl., Prayer for Relief ¶B). Independent claim 1 is representative of the core method.
- Independent Claim 1:
- taking at least a first photograph of a coded component using a handheldable camera, the coded component comprising a machine-readable element;
- taking one or more second photographs relating to a job of a client using the handheldable camera, wherein the one or more second photographs do not contain the coded component;
- wherein the at least a first photograph is operable to mark at least one of a beginning and an end of the one or more second photographs;
- sending the taken photographs, including the at least a first photograph and the one or more second photographs, to a data processing system;
- wherein the data processing system is configured to process the taken photographs to identify the at least a first photograph, and associating the one or more second photographs with the machine-readable element of the at least a first photograph.
III. The Accused Instrumentality
Product Identification
- As a declaratory judgment action, the complaint focuses on Plaintiff’s own products, which Defendant allegedly accused of infringement. These include the "Blueprint workflow tool" and "Flow capture program" (Compl. ¶40), with the complaint providing technical details on a prior-generation product, the "IQ6" software and its "ImageJoin Tool" (Compl. ¶5-7).
Functionality and Market Context
- The complaint describes a system for high-volume photographers where a photographer first captures an image of a subject holding a banner that includes a numeric code and a 2D data matrix (Compl. ¶7-9). This initial photograph is used to mark the beginning of a subject's photo series (Compl. ¶12). Subsequent photographs of the subject are taken without the banner (Compl. ¶10). The images are then uploaded to the IQ6 software, which resides on a local computer, and an "ImageJoin Tool" is used to automatically group the subsequent photos with the initial banner image (Compl. ¶13-14). The complaint includes a grid of thumbnail images showing the result of this automated grouping, where a banner image is followed by several images of the same subject. (Compl. p. 3).
IV. Analysis of Infringement Allegations
As a complaint for declaratory judgment of non-infringement, it does not contain a formal infringement claim chart. The following table summarizes the potential overlap between the patent claims and the Plaintiff's technology as described in the complaint, which likely formed the basis for the Defendant's pre-suit infringement allegations.
’506 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Potentially Accused Functionality (as described in the Complaint) | Complaint Citation | Patent Citation |
|---|---|---|---|
| taking at least a first photograph of a coded component using a handheldable camera, the coded component comprising a machine-readable element; | A photographer uses a handheld camera to capture an image of a subject holding a banner that includes numeric text and a 2D data matrix. A representative image of this banner is provided. (Compl. p. 2). | ¶7, ¶9-10 | col. 20:26-30 |
| taking one or more second photographs relating to a job of a client using the handheldable camera, wherein the one or more second photographs do not contain the coded component, | The photographer captures subsequent images of the same subject without the banner. | ¶10 | col. 20:31-34 |
| wherein the at least a first photograph is operable to mark at least one of a beginning and an end of the one or more second photographs; | The image with the banner is used to separate photographs and mark the beginning of a series for a specific subject. | ¶11-12, ¶16 | col. 20:37-40 |
| sending the taken photographs...to a data processing system... | The first and subsequent photographs are uploaded to the IQ6 software, which resided on a personal computer at the photographer's studio. | ¶13, ¶18 | col. 20:41-45 |
| ...wherein the data processing system is configured to...identify the at least a first photograph, and associating the one or more second photographs with the machine-readable element of the at least a first photograph. | The "ImageJoin Tool" within the IQ6 software is activated to group the subsequent photographs together and associate them with the first image containing the banner. | ¶14, ¶19 | col. 20:45-50 |
- Identified Points of Contention:
- Validity over Prior Art: The primary point of contention asserted in the complaint is patent invalidity. The complaint alleges that Plaintiff's own IQ6 software, which was in public use and on sale as early as 2003, performs the same functions claimed in the ’506 Patent, which has a 2009 priority date, and therefore renders the patent invalid under 35 U.S.C. § 102 (Compl. ¶22, ¶72, ¶83-84).
- Technical Question: A potential non-infringement argument may arise from the nature of the "data processing system." The complaint states the IQ6 software "resided on a personal computer at the photographer's studio" (Compl. ¶13). This raises the question of whether a local software application on a single PC meets the "data processing system" limitation, which the patent specification often describes in the context of a client-server architecture for remote processing and client access (’506 Patent, Fig. 15).
V. Key Claim Terms for Construction
- The Term: "coded component"
- Context and Importance: This term is the core of the invention. Its scope will determine what kind of markers fall within the claims. The dispute may turn on whether Plaintiff's "banner" (Compl. p. 2) meets this definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent defines the term broadly, stating the machine-readable element can "comprise any pattern that can be recognized by machine vision and/or image recognition algorithm(s)" (’506 Patent, col. 4:58-61).
- Evidence for a Narrower Interpretation: The specification frequently uses a "business card" as the primary example (’506 Patent, col. 4:46-49) and the figures exclusively depict formal 1D and 2D barcodes (’506 Patent, Figs. 5A-5C). A party could argue the invention is limited to such discrete, pre-printed media.
- The Term: "data processing system"
- Context and Importance: The definition of this term is important for determining whether Plaintiff's locally-run software infringes. Practitioners may focus on this term because the complaint specifically describes the IQ6 software as residing on a local "personal computer" (Compl. ¶13), while the patent often implies a more complex, networked environment.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent includes a generic diagram of a "computer 1401" that could represent a standalone PC, and describes it as an "exemplary environment for implementing various aspects of the invention" (’506 Patent, col. 16:21-23).
- Evidence for a Narrower Interpretation: Several embodiments and figures, such as Figure 15, explicitly depict a server-based architecture with remote photographers and clients connecting via the internet, suggesting the "system" is more than just a local application (’506 Patent, Fig. 15; col. 18:46-67).
VI. Other Allegations
- Indirect Infringement: While the complaint seeks a declaration of non-infringement, it describes photographer activities that would be central to any potential claim of induced infringement by Defendant. The complaint details how photographers use the system by taking a photo of the banner, capturing subsequent images, and using the "ImageJoin Tool" to process them (Compl. ¶10, ¶13-14).
- Willful Infringement: The complaint states that "Prior to September 7, 2018, ImageQuix had no constructive or actual notice of the '506 Patent" (Compl. ¶88). This allegation appears intended to preemptively defend against any future claims for enhanced damages or willfulness based on conduct prior to receiving Defendant's first letter.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of validity: Will the evidence concerning Plaintiff's "IQ6" software, allegedly in public use since 2003, be sufficient to prove by clear and convincing evidence that it anticipated or rendered obvious the claims of the '506 Patent, which has a 2009 priority date?
- A threshold legal question will be one of standing: Does the evidence support the complaint's suggestion of an unclear chain of title, and did the proper entity with rights to enforce the patent send the communications that created the declaratory judgment controversy?
- A key infringement question will be one of technical scope: Should the patent survive the validity challenge, the analysis will focus on whether a system running on a local personal computer, as described for the "IQ6" software, falls within the scope of the claimed "data processing system," which the patent often illustrates as a remote, server-based architecture.