Onstream Media Corp v. Vbrick Systems Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Onstream Media Corporation (Florida)
  • Defendant: Vbrick Systems, Inc. (Delaware)
  • Plaintiff’s Counsel: Daignault Iyer LLP
• Case Identification: 4:23-cv-00215, E.D. Tex., 03/17/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant has at least one employee based in the district, uses the employee's home to transact business, and has committed acts of patent infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s enterprise video platform and related services infringe a family of eight patents related to remotely accessed, browser-based audio and video recording, storage, and delivery systems.
• Technical Context: The technology concerns cloud-based, or server-side, video recording systems that allow users to capture and manage video content through a standard web browser without installing dedicated software on their local computer.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the patents-in-suit via a letter dated January 9, 2023, to which Defendant’s General Counsel responded on January 25, 2023, establishing a date of alleged knowledge for willfulness and indirect infringement claims.

Case Timeline

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

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

The Invention Explained

• Problem Addressed: The patent describes a problem where online communication and transaction systems were becoming increasingly complex and required extensive computer resources, creating a barrier for new users and limiting participation (Compl. ¶24; ’068 Patent, col. 1:31-39). The specification notes a "long existing need for a system that improves the level of communication... that is simple, efficient, and does not have extensive computer system requirements" (Compl. ¶26; ’068 Patent, col. 1:45-52).
• The Patented Solution: The invention provides an internet-based system where all audio and video recording functions are performed over a standard browser connection between a user's device (the "user front end") and a remote server system (the "host back end") (’068 Patent, col. 2:9-14). This architecture centralizes the recording software, processing, and storage on the back end, thereby eliminating the need for users to install specialized recording software on their local devices (Compl. ¶27; ’068 Patent, col. 2:29-32).
• Technical Importance: This approach aimed to lower the technical barrier to entry for creating and sharing online video content, making such capabilities accessible to users without specialized hardware or software.

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶72).
• Claim 1 is a method claim with the following essential elements:
  • An Internet-based recording method for recording audio and video material over an Internet browser connection established between a user front end and a host back end.
  • Recording the audio and video material over the browser connection, with the material originating at the user front end and being recorded on the host back end.
  • Performing the recording without using any recording software installed on the user front end, using only the Internet browser and a recording device.
  • Storing the recorded material on the host back end as a complete video file.
  • Generating code associated with the stored material.
  • Enabling the code to be copied and pasted to an additional location, where activating the code provides access to the recorded material.
• 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”

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the ’068 Patent, this patent addresses the same problem of overly complex and resource-intensive online video recording systems (Compl. ¶33).
• The Patented Solution: The solution is architecturally similar to that of the ’068 Patent, focusing on a client-server model where the user interacts through a browser while the heavy lifting of recording and storage occurs on a remote host. The claims of this patent focus on the delivery of a "platform-independent web application" from the host to the user's browser to initiate and manage the streaming and recording process (’728 Patent, col. 15:58-67).
• Technical Importance: This claimed approach emphasizes cross-platform compatibility, aiming to provide a consistent user experience across different operating systems and devices without requiring native applications.

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶93).
• Claim 1 is a method claim with the following essential elements:
  • Transmitting a platform-independent web application from the host back end to the user front end via a network.
  • 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 material as a complete video file.
  • Generating code associated with the stored material to facilitate access from an additional location, where the code's content depends on the type of code supported by that location.
  • Enabling the code to be copied and pasted to the additional location, where activating it provides access to the recorded material.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,038,930 - “Remotely Accessed Virtual Recording Room”

• Technology Synopsis: This patent, from the same family, addresses the same technical problem of simplifying online video creation. Its claims focus on the method of transmitting a browser-independent recording application to a client device, executing it in a browser, and using it to capture a media stream without relying on recording management software installed on the client device (Compl. ¶109-110).
• Asserted Claims: At least independent claim 1 (Compl. ¶108).
• Accused Features: The complaint accuses Vbrick's system of transmitting a browser-independent recording application that executes in a user's browser to capture and stream media to Vbrick's backend servers for recording (Compl. ¶109-111).

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

• Technology Synopsis: This patent covers an Internet-based recording method where all recording functions occur over a browser connection. The key steps include recording material that originates on the user front end onto the host back end without requiring recording functionality on the user's device, storing the material, and generating shareable code (Compl. ¶122-125).
• Asserted Claims: At least independent claim 1 (Compl. ¶121).
• Accused Features: The Vbrick system is accused of performing all audio/video recording functions over an internet browser connection, storing the recorded material on its back end, and generating embed codes for sharing and access (Compl. ¶122-125).

U.S. Patent No. 10,674,109 - “Remotely Accessed Virtual Recording Room”

• Technology Synopsis: This patent's claims are directed to a method of transmitting a browser-independent recording application from a backend server to a client device, where the application executes in the browser to capture a media stream. The invention emphasizes that this capture occurs without using separate recording management software installed on the client device (Compl. ¶136-137).
• Asserted Claims: At least independent claim 1 (Compl. ¶135).
• Accused Features: The Vbrick system is alleged to infringe by transmitting a browser-based application to a user's device, which then captures and streams media to Vbrick's servers for recording without requiring locally installed management software (Compl. ¶136-138).

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

• Technology Synopsis: The invention claimed in this patent involves a method where, in response to a user interaction, a first code is delivered from a host to a user's device to initiate streaming from that device back to the host. A key aspect is that this initiating code is not pre-installed on the user's device (Compl. ¶150).
• Asserted Claims: At least independent claim 1 (Compl. ¶148).
• Accused Features: The complaint alleges that Vbrick's system delivers executable code to a user's browser on demand to initiate a recording session, with this code enabling the streaming of audio and video from the user's device to Vbrick's servers (Compl. ¶150-152).

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

• Technology Synopsis: This patent claims a method of receiving streamed media at a host back-end server from a front-end capturing device. The method includes remotely recording the material as a sequentially stored file, generating a URL that points to the file, and enabling other digital materials (like images or slides) to be associated with that file (Compl. ¶163-166).
• Asserted Claims: At least independent claim 1 (Compl. ¶162).
• Accused Features: The Vbrick system is accused of receiving and recording streamed media on its servers, storing it, generating shareable URLs, and providing features to edit and associate additional content like slides with the recorded video (Compl. ¶164-167).

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

• Technology Synopsis: This patent covers a network-based recording method where the recording is done using only executable code delivered from the host back end to the user front end, without any recording software being installed locally. The method includes recording at the host, storing the material, and generating shareable/embeddable code (Compl. ¶179-182).
• Asserted Claims: At least independent claim 1 (Compl. ¶177).
• Accused Features: Vbrick's system is alleged to accomplish recording using only browser-executable code delivered from its servers, storing the result on the back end, and generating code to facilitate access and sharing (Compl. ¶180-184).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are collectively referred to as the "Vbrick Video Products and Services" and the enabling "Vbrick System" (Compl. ¶14). Specific products named include Vbrick Enterprise Video Platform, Vbrick Distribution eCDN Solutions, Rev Cloud, Producer, and Rev Portal (Compl. ¶14).

Functionality and Market Context

The Vbrick System is described as an enterprise video platform that provides live and on-demand video streaming, content management, and analytics (Compl. ¶18). A core accused feature is the ability for a user to "Broadcast live with a single presenter through a simple browser-based interface" (Compl. ¶73, Fig. on p. 17). This functionality allows users to stream and record audio and video using only a web browser and webcam, without needing to install separate software (Compl. ¶82). The complaint alleges the system is used by "thousands of clients worldwide," including through channel partners like Verizon and for customers such as the Texas Department of Information Resources and Baylor College of Medicine (Compl. ¶9-11). The system architecture involves content delivery from Vbrick's cloud ("Vbrick REV") and a Content Delivery Network ("CDN") to viewers over the internet (Compl. ¶78-79, Fig. on p. 32).

IV. Analysis of Infringement Allegations

9,161,068 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The central dispute may concern the claim phrase "without using any recording software installed on the user front end." The complaint alleges Vbrick provides a "browser-executable-code" (Compl. ¶76). This raises the question of whether code delivered to and executed by a browser, even if not permanently installed, constitutes "recording software" that would place the accused system outside the scope of the claim.
• Technical Questions: What evidence does the complaint provide that Vbrick's system generates and enables the pasting of "code" specifically for providing access, as recited in the final elements of claim 1? While the complaint shows a "share" function (Compl. ¶81, Fig. on p. 37), the infringement allegations for the '068 patent itself do not detail this mechanism as explicitly as they do for other asserted patents.

9,467,728 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: What is the scope of a "platform-independent web application"? Does Vbrick's documented list of supported browser versions (Compl. ¶95, Fig. on p. 50) introduce platform dependencies that might fall outside the claim's scope?
• Technical Questions: Does the complaint provide sufficient evidence that the "content of the generated code depends on a type of code supported by the additional location"? While Vbrick offers "Link" and "Embed" options (Compl. ¶97, Fig. on p. 54), the analysis will question whether this functionality meets the specific claim limitation as written.

V. Key Claim Terms for Construction

"without using any recording software installed on the user front end" ('068 Patent, Claim 1)

• Context and Importance: This term is central to distinguishing the claimed invention from prior art that required users to download and install specific applications or plug-ins. Its construction will be critical because the accused system delivers "browser-executable-code" to the user. Practitioners may focus on whether "installed" means permanently stored application files versus temporarily executed code delivered for a session.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation (i.e., "installed" means any software, however temporary): The patent does not appear to provide an explicit definition that would support this. A defendant might argue that the plain meaning of "software...that records" covers any code performing that function, regardless of its persistence.
  • Evidence for a Narrower Interpretation (i.e., "installed" means permanently stored): The patent's background emphasizes the goal of a system that is "simple, efficient, and does not have extensive computer system requirements" to attract new users (Compl. ¶26; ’068 Patent, col. 1:48-52). This purpose could support an interpretation where "installed software" refers to the burdensome applications the patent sought to avoid, not transient, browser-managed code.

"platform-independent web application" ('728 Patent, Claim 1)

• Context and Importance: This term defines the nature of the software delivered to the user's browser. The dispute will likely center on the degree of independence required. The complaint relies on a compatibility table showing support for multiple platforms (Windows, macOS) and browsers (Chrome, Safari, etc.) as evidence of this feature (Compl. ¶95).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation (i.e., works on major platforms): The specification does not provide a specific definition. A plaintiff may argue that in the context of the invention, the term's meaning is fulfilled if the application functions across the dominant consumer and enterprise operating systems using standard, widely available web browsers.
  • Evidence for a Narrower Interpretation (i.e., must be completely agnostic to platform): A defendant may argue that if the application requires different code paths or has known compatibility limitations (e.g., works only on browser version 107+), it is not truly "independent" of the platform. The specification's lack of a definition may require the court to look to the term's ordinary meaning in the art at the time of the invention.

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for all eight patents. The allegations for inducement are based on Defendant’s publishing and distribution of user guides, advertisements, blog posts, live events, and other instructions that allegedly encourage and instruct customers on how to use the Vbrick System in an infringing manner (Compl. ¶86-88, ¶101-103, ¶114-116, ¶128-130, ¶141-143, ¶155-157, ¶170-172, ¶187-189).

Willful Infringement

Willfulness is alleged for all eight patents based on alleged pre-suit knowledge. The complaint asserts that Defendant has been on notice of the patents-in-suit "at least as early as January 25, 2023," the date Defendant’s General Counsel allegedly responded to a notice letter from Plaintiff’s counsel (Compl. ¶85, ¶100, ¶113, ¶127, ¶140, ¶154, ¶169, ¶186). The complaint alleges that infringement has continued since this date.

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

• A core issue will be one of definitional scope: can the limitation "without using any recording software installed on the user front end" ('068 Patent) be construed to read on a system that delivers temporary, session-based executable code to a standard web browser? The resolution will depend on whether "installed" is interpreted as requiring permanent storage on the user's device.
• A second key issue will be one of technological classification: does the accused Vbrick system, which supports a specific matrix of operating systems and browser versions, qualify as a "platform-independent web application" under the meaning of the '728 Patent? This question will require the court to determine the necessary degree of independence and interoperability.
• A final overarching question will be one of claim differentiation: with eight patents from the same family asserted against the same system, the case will likely involve a detailed analysis of the subtle distinctions in claim language across the patents and how each distinct limitation is or is not met by the accused functionality.