DCT
3:11-cv-00367
Summit 6 LLC v. Research In Motion Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Summit 6 LLC (Delaware)
- Defendants: Research In Motion Corp., Research In Motion Limited, Samsung Electronics Co. Ltd., Samsung Telecommunications America LLC, Multiply, Inc., Facebook, Inc., and Photobucket Corp. (Various)
- Plaintiff’s Counsel: McKool Smith, P.C.
- Case Identification: 3:11-cv-00367, N.D. Tex., 02/23/2011
- Venue Allegations: Venue is alleged based on Defendants conducting business, making sales, and placing products into the stream of commerce with the expectation of purchase by consumers within the Northern District of Texas.
- Core Dispute: Plaintiff alleges that Defendants’ smartphones, mobile applications, and web services for uploading digital media infringe patents related to a web-based media submission tool.
- Technical Context: The technology concerns simplifying the process for non-technical users to upload media like photos and videos to websites by embedding a tool into a webpage that automates pre-processing tasks such as resizing and reformatting.
- Key Procedural History: The asserted U.S. Patent No. 7,765,482 is a continuation of the application that led to the co-asserted U.S. Patent No. 6,895,557. Subsequent to the filing of this complaint, a January 10, 2019 Inter Partes Review Certificate for the '482 patent cancelled numerous claims, including many of those asserted in this action. This development significantly narrows the scope of the dispute with respect to the '482 patent.
Case Timeline
| Date | Event |
|---|---|
| 1999-07-21 | Priority Date for '557 Patent and '482 Patent |
| 2005-05-17 | Issue Date for U.S. Patent No. 6,895,557 |
| 2010-07-27 | Issue Date for U.S. Patent No. 7,765,482 |
| 2011-02-23 | Complaint Filing Date |
| 2019-01-10 | Inter Partes Review Certificate issued for '482 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,765,482 - “Web-Based Media Submission Tool,” issued July 27, 2010
The Invention Explained
- Problem Addressed: The patent describes the process of transferring digital media over the internet as a "cumbersome and daunting process" for the average user, often requiring separate software like FTP programs and specialized technical knowledge ('482 Patent, col. 1:20-24).
- The Patented Solution: The invention provides a "web-based media submission tool" that can be embedded directly into a third-party website ('482 Patent, Abstract). This tool allows a user to select media on their local computer and have it automatically "pre-processed" according to parameters sent from a remote device (e.g., a server) before being transmitted for publication, all without the user needing to perform manual technical steps ('482 Patent, col. 9:45-65).
- Technical Importance: This approach aimed to streamline the sharing of user-generated content, making it easier for websites to acquire and display media from users who lack technical sophistication.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 35 against various defendants (Compl. ¶¶ 37-41).
- Independent Claim 1 (Method):
- Receiving pre-processing parameters from a remote device.
- Receiving an identification of a group of digital content items for transmission.
- Pre-processing the identified content using the received parameters, which control the client device to place the content into a specified form.
- Transmitting the pre-processed content to a server device for subsequent publishing.
- The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶¶ 37-41).
U.S. Patent No. 6,895,557 - “Web-Based Media Submission Tool,” issued May 17, 2005
The Invention Explained
- Problem Addressed: The patent identifies the difficulty faced by the "imaging civilian" in manipulating and sharing digital images online, a process described as requiring a level of sophistication beyond that of the ordinary user ('557 Patent, col. 1:19-24).
- The Patented Solution: The invention is a "media object identifier" embedded within a website, which provides a graphical interface for acquiring media objects (e.g., via drag-and-drop) ('557 Patent, col. 3:11-16, col. 11:1-8). The tool then "pre-processes" the media object on the client side "for the requirements of the third-party web site" without requiring additional user selection before upload ('557 Patent, col. 11:1-12). This pre-processing can include resizing, compression, or format changes ('557 Patent, col. 5:1-15).
- Technical Importance: The technology provided a standardized channel for websites to acquire user-contributed media that was automatically conformed to the site's specifications, reducing backend processing and simplifying the user experience.
Key Claims at a Glance
- The complaint asserts independent claims 1, 15, 28, 37, 45, and 60 against various defendants (Compl. ¶¶ 44-46).
- Independent Claim 1 (Method):
- Accessing a media object identifier embedded in a third-party web site.
- Associating a media object with the identifier.
- Pre-processing the media object using the identifier to meet the requirements of the website.
- This pre-processing is done "without additional user selection of the pre-processing."
- The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶¶ 44-46).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are broadly defined and fall into two categories:
- Devices and Services: "RIM upload services and/or devices" and "Samsung upload services and/or devices," including numerous listed smartphone and tablet models (Compl. ¶¶ 3, 9).
- Web-based Applications: "Upload services" provided by Multiply, Inc., Facebook, Inc., and Photobucket Corporation, including their respective websites and mobile applications (Compl. ¶¶ 15, 18, 21).
Functionality and Market Context
- The accused functionality for the device makers involves devices that "obtain digital content, and upload the digital content to a remote server or transmit the digital content to a remote device" (Compl. ¶¶ 3, 9).
- For the web service providers, the accused functionality involves services, servers, and applications that "transmit pre-processing parameters, receive pre-processed digital content, and/or distribute pre-processed digital content to a remote device" (Compl. ¶¶ 15, 18, 21). The complaint notes that applications from Facebook and Photobucket are offered for devices made by co-defendants RIM and Samsung (Compl. ¶¶ 18, 21).
- The complaint does not provide specific technical details on how the accused instrumentalities operate, focusing instead on the general function of media uploading.
IV. Analysis of Infringement Allegations
The complaint makes general allegations of infringement without providing an element-by-element mapping of the accused products to the claim limitations. The following tables summarize the broad infringement theory based on the complaint's language.
No probative visual evidence provided in complaint.
'482 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. receiving pre-processing parameters from a remote device... | The complaint alleges that Facebook and other services "transmit pre-processing parameters" as part of their upload services, which are embodied in their websites and applications used on devices from RIM and Samsung (Compl. ¶¶ 18, 40). | ¶18, ¶40 | col. 9:25-44 |
| b. receiving an identification of a group of one or more items of digital content for transmission... | The complaint alleges that RIM and Samsung devices "obtain digital content" and that their "upload services and/or devices... practice or embody one or more claims" of the patent (Compl. ¶¶ 3, 37, 38). | ¶3, ¶37, ¶38 | col. 9:45-55 |
| c. pre-processing said identified group of one or more items of digital content using said received pre-processing parameters... | The complaint alleges that the services of Facebook, Multiply, and Photobucket "receive pre-processed digital content" and that the devices of RIM and Samsung "practice the methods" of the asserted claims, which include this pre-processing step (Compl. ¶¶ 15, 18, 21, 37, 38). | ¶15, ¶18, ¶37, ¶38 | col. 9:56-65 |
| d. transmitting said pre-processed group... to said server device for subsequent publishing... | The complaint alleges that all defendants' accused products and services involve uploading digital content from a device to a remote server (Compl. ¶¶ 3, 9, 15, 18, 21). | ¶3, ¶9, ¶15 | col. 10:1-10 |
Identified Points of Contention
- Technical Question: The complaint does not specify where the alleged "pre-processing" occurs. A central question will be whether the accused systems perform this step on the client device using parameters from the server, as the claims require, or whether the processing (e.g., resizing) occurs on the server after the original file is uploaded.
- Scope Question: The complaint asserts numerous claims of the '482 Patent that were subsequently cancelled in an Inter Partes Review (Compl. ¶¶ 37-41). A primary issue will be whether the plaintiff can establish infringement based on the surviving, and potentially narrower, set of claims.
V. Key Claim Terms for Construction
Patent: '482 Patent
- The Term: "pre-processing said identified group of one or more items of digital content using said received pre-processing parameters" (from Claim 1)
- Context and Importance: This term is central to the infringement analysis, as it defines the core automated action of the invention. The dispute will likely focus on whether the accused systems' handling of user-uploaded media constitutes "pre-processing" under the control of "received... parameters" before the content is transmitted, or a different process (e.g., post-upload server-side processing).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists numerous types of processing, such as resizing, changing quality, and changing file format, suggesting "pre-processing" could encompass a wide range of automated modifications (col. 10:41-43).
- Evidence for a Narrower Interpretation: The claim requires the pre-processing to use "received pre-processing parameters" to place content "into a specified form in preparation for publication," which may be interpreted to require a direct, causal link where parameters from a server dictate specific modifications on the client device before upload (col. 9:56-65).
Patent: '557 Patent
- The Term: "pre-processing... without additional user selection of the pre-processing" (from Claim 1)
- Context and Importance: This limitation defines the automated and user-transparent nature of the invention. Practitioners may focus on this term because the case may turn on whether users of the accused systems must take additional steps to initiate processing (e.g., selecting a "high quality" or "low quality" upload option), which could fall outside the scope of "without additional user selection."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the benefit as freeing the user from needing to understand "technical terms such as JPEG, resolution, pixel, kilobyte" because the tool "handles all of these tasks for the user," suggesting the focus is on automating technically complex steps, even if a simple user choice is involved (col. 2:50-55).
- Evidence for a Narrower Interpretation: The patent emphasizes that the tools "will automatically prepare [the media] to meet the requirements of the second location," implying a fully automated process that requires no user input regarding the processing itself, distinguishing it from a user-directed process (col. 5:17-20).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that all defendants contribute to and induce infringement by "end users" of the accused devices and services (Compl. ¶¶ 37-41, 44-46). However, the complaint does not plead specific facts to support the knowledge and intent required for these claims, such as referencing user manuals or specific instructions that direct users to infringe.
- Willful Infringement: The complaint does not contain specific allegations of willful infringement or pre-suit knowledge of the patents. The prayer for relief includes a request for enhanced damages under 35 U.S.C. § 284, but the factual basis for such an award is not developed in the body of the complaint (Compl. ¶ 53).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central evidentiary question will be one of technical operation: Does the accused functionality perform the claimed "pre-processing" on the user's client device under the control of server-sent parameters before upload, as required by the claims, or is the processing performed post-upload on the defendants' servers? The complaint lacks the technical detail to resolve this question.
- A key legal issue will be one of claim scope and survival: Given that numerous asserted claims of the '482 patent were cancelled in an Inter Partes Review after the suit was filed, can the plaintiff prove that the accused systems infringe the remaining, un-cancelled claims?
- A dispositive question for the '557 patent will be one of automation: Do the accused media upload systems operate "without additional user selection of the pre-processing," or do they require user input (e.g., choosing an image size or quality level) that removes them from the scope of the claims?