DCT
1:20-cv-00214
Onstream Media Corp v. Facebook Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Onstream Media Corporation (Florida)
- Defendant: Facebook, Inc. (Delaware)
- Plaintiff’s Counsel: The Mort Law Firm, PLLC; Goldberg Segalla LLP
- Case Identification: 6:19-cv-00708, W.D. Tex., 12/13/2019
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Facebook has committed acts of infringement in the district and maintains a regular and established place of business there, specifically citing a large corporate office in Austin.
- Core Dispute: Plaintiff alleges that Defendant’s Facebook Live platform and associated services infringe four patents related to remotely recording, storing, and delivering audio/video streams.
- Technical Context: The technology concerns systems that allow users to record and stream media via a standard internet browser, with the processing and storage handled on remote servers, thus reducing the technical requirements on the user's device.
- Key Procedural History: The patents-in-suit constitute a single family stemming from a 2004 application. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings related to these patents.
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 |
| 2019-04-30 | Alleged Infringing Use (Facebook Live Panel Discussion) |
| 2019-12-13 | Complaint Filed |
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 improve online communications, particularly for uses like online auctions, without increasing intellectual complexity or computer system requirements for the end-user (Compl. ¶34; ’930 Patent, col. 1:48-57). Existing systems were seen as burdensome, potentially requiring specialized software or hardware on the user's device (Compl. ¶37).
- The Patented Solution: The invention provides a system where a user, via a standard internet browser, can stream audio and video to a remote "host back end." The host server performs the actual recording and storage of the media, eliminating the need for recording functionality on the user's "front end" device (’930 Patent, col. 2:8-24). The system can then generate code (e.g., a hyperlink or embed code) that allows the recorded media, still stored on the host server, to be accessed from another location, such as an auction website (’930 Patent, Abstract; Fig. 1).
- Technical Importance: This server-side recording architecture simplifies the user experience by centralizing the complex tasks of media processing and storage, making rich media creation more accessible to non-technical users (Compl. ¶35).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 and dependent claims 18, 35, and 48 (Compl. ¶72).
- Independent Claim 1 (Method):
- Delivering browser-executable, browser-independent recording application code from a host back end to a user front end.
- Executing the code in the user's browser to initiate streaming of audio/video from the user's recording device to the host back end.
- Streaming the material as it is captured, not as a complete file, and without using recording software installed on the user's device.
- Recording and storing the material on the host back end as a complete video file.
- Providing access to the recorded material.
- The complaint reserves the right to assert additional claims (Compl. ¶56).
U.S. Patent No. 9,467,728 - Remotely Accessed Virtual Recording Room
- Issued: October 11, 2016
The Invention Explained
- Problem Addressed: As with the parent '068 patent, the technology addresses the complexity and high system requirements of then-existing media recording systems (Compl. ¶43; ’930 Patent, col. 1:48-57).
- The Patented Solution: The ’728 patent claims a system, rather than a method, that embodies the same technical solution. A backend server provides a platform-independent recording application to a client device. This application initiates and manages the streaming from the client to the server, where the media is recorded, stored, and made accessible via a generated code (e.g., a URL) (’930 Patent, col. 2:8-24).
- Technical Importance: Claiming the invention as a system provides a different angle of protection, focusing on the architecture of the service (the servers, data storage, and their components) rather than just the steps of its use (Compl. ¶84).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 and dependent claim 21 (Compl. ¶89).
- Independent Claim 1 (System):
- A backend server connected to a client device via a network.
- The server comprises a non-transitory platform-independent recording application that is transmitted to the client device.
- The application initiates streaming from a receiving device on the client to the backend server.
- The application records the audio/video on the backend server and stores it as a complete file.
- The application generates a copyable and pasteable code that facilitates access to the recorded material from an additional location.
- The complaint reserves the right to assert additional claims (Compl. ¶80).
U.S. Patent No. 10,038,930 - Remotely Accessed Virtual Recording Room
- Issued: July 31, 2018
- Technology Synopsis: This patent, which shares a specification with the others, claims a method for browser-based media recording. The method involves a backend server transmitting a browser-independent recording application to a client device, which then captures a media stream from the client and records it on the server, all without requiring specific recording software on the client device (’930 Patent, col. 15:52-68).
- Asserted Claims: At least independent claim 1 and dependent claim 11 (Compl. ¶105).
- Accused Features: The complaint alleges that the Facebook Live system, including its servers and the browser-based applications it delivers to users, practices this claimed method (Compl. ¶¶100-104).
U.S. Patent No. 10,200,648 - Remotely Accessed Virtual Recording Room
- Issued: February 5, 2019
- Technology Synopsis: This patent claims an Internet-based recording method where all recording functions occur over a browser connection between a user front end and a host back end. The invention allows for recording without requiring recording functionality on the user's device, storing the media on the host's servers, and generating codes to facilitate access to the stored media (’648 Patent, col. 7:40-61).
- Asserted Claims: At least independent claim 1 and dependent claim 18 (Compl. ¶121).
- Accused Features: The complaint alleges that the Facebook Live system's method of using a browser connection to record, store, and provide access to user-created video infringes this patent (Compl. ¶¶116-120).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "Facebook Live System," which includes the Facebook Live service and the associated hardware and software components such as servers, server software, and client software that enable its operation (Compl. ¶¶57-58).
Functionality and Market Context
- The complaint describes Facebook Live as an online video streaming service that allows users to broadcast real-time video from their computer or mobile device's camera to the Facebook platform (Compl. ¶57, ¶59). The system operates over an internet connection, where a user can "go live" via a Facebook application or an internet browser (Compl. ¶60). The complaint alleges that Facebook's servers deliver executable code to the user's browser, which initiates the audio and video stream (Compl. ¶¶61, 63). The stream of data is transmitted to Facebook's servers as it is being captured (Compl. ¶69). After the broadcast is complete, the recording is stored on Facebook's servers and is made accessible for later viewing on the platform (Compl. ¶¶70-71).
- The complaint provides a screenshot of a "Facebook Live Panel Discussion" hosted by the City of Austin as an example of infringing use within the judicial district (Compl. ¶28).
IV. Analysis of Infringement Allegations
'068 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| delivering, from the host back end, browser-executable code over the Internet for use in an Internet browser, wherein the browser-executable code is a browser independent recording application | Facebook's servers deliver code to a user's browser, such as the code that generates the "Go Live" interface, which the complaint alleges is a browser-independent recording application. This is supported by a screenshot of an API call to create a live video. | ¶61, ¶62, ¶63 | col. 7:40-47 |
| the browser-executable code is executed through the Internet browser at the user front end and initiates the streaming of audio and video material from a recording device on the user front end to the host back end over the Internet | When a user initiates a broadcast, the code executes in the browser and begins streaming from the user's camera and microphone to Facebook's servers. A screenshot shows a video being streamed live. | ¶65, ¶67 | col. 10:2-9 |
| the audio and video material is streamed over the Internet as it is being captured with the recording device, not as a complete video file on the user front end, without using any recording software installed on the user front end | The complaint alleges the system transmits a stream of data, not a complete file, and that users can broadcast without specialized equipment or software. A screenshot of a Hootsuite article supports the claim of not needing special equipment. | ¶64, ¶68, ¶69 | col. 2:50-58 |
| recording the audio and video material on the host back end and storing the recorded audio and video material as a complete video file... | The streamed material is recorded and stored as a complete file on Facebook's servers. A screenshot of a "Top Videos" dashboard is provided as evidence of stored videos. | ¶70 | col. 5:21-25 |
| providing access to the recorded audio and video material. | After the live stream ends, Facebook makes the complete recording available for viewing through its website, hosted on its servers. A screenshot shows a completed live video posted on a user's feed. | ¶71 | col. 6:40-54 |
'728 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a backend server connected to a client device via a network... | The complaint alleges Facebook's servers ("backend server") are connected via the internet to user devices ("client device") to provide the Facebook Live service. | ¶83, ¶84 | col. 2:8-14 |
| a non-transitory platform-independent recording application that is transmitted to the client device via the network, wherein the... application... initiates streaming of audio and video material... | The complaint alleges Facebook's servers transmit a "platform-independent web application" to the user's device, which in turn initiates the streaming of media as it is captured. | ¶84 | col. 15:52-60 |
| [the application] records the audio and video material on the backend server; [and] stores the recorded audio and video material as a complete video file in the data storage | The complaint alleges that the Facebook Live web application records and stores the audio and video material as a complete file on Facebook's servers. A screenshot of a completed video on a user's feed is provided as evidence. | ¶85 | col. 5:15-25 |
| [the application] generates code associated with the recorded audio and video material... wherein the code facilitates accessing the recorded audio and video material... [and] is copyable and pasteable | The complaint alleges the system generates codes, such as URLs or HTML codes, associated with the recorded video. A screenshot of instructions mentions an option to get an HTML code to embed the video. This generated code allows others to access the video from additional locations. | ¶86, ¶88 | col. 2:32-44 |
Identified Points of Contention
- Scope Questions: A central question will be whether the accused Facebook Live application, which runs within the main Facebook mobile app or a web browser, qualifies as a "browser-independent recording application" or a "platform-independent web application" as those terms are used in the patents. The defense may argue that the application is not "independent" but is an integrated feature of the broader Facebook platform.
- Technical Questions: The analysis may focus on whether the recording is truly accomplished "without using any recording software installed on the user front end" ('068 Patent, Claim 1). While a user may not install a separate application, the court will have to consider whether the code running within the Facebook app or browser constitutes "recording software installed on the user front end," raising a key factual dispute about the system's technical operation.
V. Key Claim Terms for Construction
The Term: "browser-independent recording application" (from '930 Patent, Claim 1) / "platform-independent web application" (from '728 Patent, Claim 1)
Context and Importance: This term is critical because the core of the invention is enabling recording without requiring the user to install special, platform-specific software. The infringement case hinges on whether the code executed by the Facebook app or website to enable live streaming meets this definition. Practitioners may focus on this term to determine if there is a distinction between code that is merely executed by a browser/app versus software that is installed on the device.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification contrasts the invention with systems that "typically require some type of additional 'plug in' or other additional custom software application to be downloaded and installed locally" (’930 Patent, col. 6:1-5). Plaintiff may argue this language supports a broad definition where any application that does not require a separate download and installation by the user is "independent."
- Evidence for a Narrower Interpretation: The claims require the application to be transmitted from a backend server and to execute "in a browser" (’930 Patent, col. 15:52-60). Defendant may argue this language limits the scope to a specific client-server architecture where the application is ephemeral and purely browser-based, potentially distinguishing it from code that is part of a pre-installed native mobile application like Facebook's.
The Term: "without using recording management software installed on the client device" (from '930 Patent, Claim 1)
Context and Importance: This limitation defines a key advantage of the invention—offloading the recording function to the server. The dispute will turn on the definition of "recording management software." If the code within the Facebook application that accesses the camera and encodes the stream is deemed to be "recording management software," it could challenge the infringement allegation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's background criticizes systems with "extensive computer system requirements" (’930 Patent, col. 1:60-63). Plaintiff may argue "recording management software" refers to heavy, standalone programs, not the lightweight, browser-executed code that simply captures and transmits a stream.
- Evidence for a Narrower Interpretation: The term itself is not explicitly defined. Defendant may argue that any software on the client device that manages the capture, encoding, and transmission of the media stream, however delivered, constitutes "recording management software," and that the Facebook app inherently contains such software.
VI. Other Allegations
Indirect Infringement
- The complaint alleges induced infringement under 35 U.S.C. § 271(b) for all asserted patents. It claims Facebook encourages infringement by providing customers with user guides, advertisements, promotional materials, and instructions on how to use Facebook Live (Compl. ¶¶74, 91, 107, 123). The complaint includes screenshots of "How do I go live" instructions and promotional materials as evidence of these encouraging acts (Compl. p. 18, 24).
Willful Infringement
- While not pleaded as a separate count, the complaint establishes a basis for willfulness by alleging that Facebook has had knowledge of the patents "at least as early as the filing and service of the Complaint" and yet continues to infringe (Compl. ¶¶73, 90, 106, 122). This post-suit knowledge allegation is intended to support a claim for enhanced damages under 35 U.S.C. § 284.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "browser-independent recording application" be construed to cover the live-streaming functionality embedded within Facebook's pre-installed native mobile application, or is its meaning limited to code executed in a traditional desktop web browser?
- A second central question is one of technical interpretation: Does the code within the Facebook application that accesses the camera and initiates the data stream constitute "recording management software installed on the client device" as prohibited by the claims, or is it merely a client-side component of a server-side recording system, as envisioned by the patent?
- Finally, an evidentiary question will focus on venue: While the complaint provides substantial evidence of Facebook's physical presence in Austin, the court will need to determine if this presence meets the "regular and established place of business" standard for patent venue as interpreted by the Federal Circuit, which has become a heavily litigated issue.