Onstream Media Corp v. Softermii Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Onstream Media Corporation (Florida)
  • Defendant: Softermii, Inc. (California)
  • Plaintiff’s Counsel: Daignault Iyer LLP
• Case Identification: 6:23-cv-00390, W.D. Tex., 05/19/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant operates an office in Austin, Texas, solicits Texas-based customers, and employs personnel within the district.
• Core Dispute: Plaintiff alleges that Defendant’s video products and services, which are based on the WebRTC framework, infringe a portfolio of nine patents related to remotely accessed, browser-based audio and video stream recording, storage, and delivery systems.
• Technical Context: The technology concerns web-based video communication systems that allow users to record and stream media through a standard internet browser without installing specialized software, offloading the processing and storage functions to remote servers.
• Key Procedural History: The complaint does not allege any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

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’s background section identifies a need for online communication systems that are simple, efficient, and do not have extensive computer system requirements, which can be a barrier for new users participating in online transactions like auctions (’068 Patent, col. 1:31-52; Compl. ¶¶29-31).
• The Patented Solution: The invention is a system where a user at a "user front end" (e.g., a personal computer with a web browser) can record and stream audio and video to a "host back end" (i.e., a server) for processing and storage ('068 Patent, col. 2:9-24). This architecture avoids the need for the user to install specialized recording software or plugins on their local device ('068 Patent, col. 2:30-33). The system can then generate code, such as an HTML snippet, that allows the recorded media to be accessed or embedded elsewhere online ('068 Patent, col. 2:33-44).
• Technical Importance: This client-server approach to media recording centralized complex processing tasks and storage, lowering the technical barrier for end-users to create and share video content online (Compl. ¶32).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 ('068 Patent, col. 15:52-16:9; Compl. ¶82).
• Claim 1 is a method comprising the essential elements of:
  • Recording, over a packet-based network connection at a host back end, digital audio and digital video material that originates from a user front end.
  • Performing this recording without using any recording software installed on the user front end.
  • Storing the recorded digital audio and digital video material at the host back end.
  • Generating code associated with the stored material to facilitate accessing the stored material.
  • Enabling the generated code to be activated at an additional location to provide access to the stored 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”

• Issued: October 11, 2016

The Invention Explained

• Problem Addressed: The ’728 patent shares a common specification with the '068 patent and addresses the same technical problems of complexity and high system requirements for online video recording systems (Compl. ¶38; '728 Patent, col. 1:31-52).
• The Patented Solution: The invention claimed in the ’728 Patent is a secure, distributed system for audio and video recording focused on mobile devices ('728 Patent, col. 15:51-16:47). In this system, a host server delivers a "stream number" to an application on a user's mobile device, which then uses that number to initiate a secure stream to the server. A key aspect is that the media is streamed in real-time and not stored as a complete file on the mobile device before streaming begins ('728 Patent, col. 16:32-37).
• Technical Importance: This system architecture is designed for secure, real-time media capture and streaming from mobile devices, which have limited local storage and processing power compared to desktop computers (Compl. ¶32).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 ('728 Patent, col. 15:51-16:47; Compl. ¶98).
• Claim 1 is a system comprising the essential elements of:
  • An application configured to operate on a mobile front end capturing device.
  • A host back end application server system.
  • The host back end delivering a "stream number" to the application in response to a user interaction.
  • The application using the stream number to initiate secure streaming of digital audio and video material to the host back end.
  • The digital audio and video material not being stored as a complete file on the mobile front end prior to the initiation of streaming.
  • At least one host back end application server recording the securely streamed 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”

• Issued: July 31, 2018
• Technology Synopsis: This patent, sharing the '068 specification, claims a method where a backend server transmits a browser-independent recording application to a client device. This application, executing in a browser, captures and streams media to the server for recording without requiring separate record management software on the client device (’930 Patent, col. 15:47-16:51; Compl. ¶¶109-113).
• Asserted Claims: At least independent claim 1 (Compl. ¶108).
• Accused Features: The Softermii System, which allegedly transmits a browser-based application from its servers to user devices to enable media streaming and recording (Compl. ¶¶109, 111).

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

• Issued: February 5, 2019
• Technology Synopsis: This patent claims a method for browser-based recording where audio and video material is recorded over an internet connection without requiring recording functionality to be present on the user's device. The material is stored on the host's servers, and the system generates codes (e.g., URLs) that can be copied and pasted to other locations to provide access to the recording (’648 Patent, col. 13:43-14:67; Compl. ¶¶118-122).
• Asserted Claims: At least claim 1 (Compl. ¶117).
• Accused Features: The Softermii System's alleged method of recording user-created media over a browser connection, storing it on Softermii's servers, and generating codes to access the stored material (Compl. ¶¶119, 120, 121).

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

• Issued: June 2, 2020
• Technology Synopsis: This patent claims a method where a server transmits a browser-independent recording application to a client device, which executes in a browser. The server then receives a media stream captured by this application, again without requiring separate recording management software on the client device, and records the stream (’109 Patent, col. 13:43-14:31; Compl. ¶¶127-130).
• Asserted Claims: At least claim 1 (Compl. ¶126).
• Accused Features: The Softermii System's alleged process of delivering a browser-based application to a client device for capturing and streaming media, which is then recorded on Softermii's servers (Compl. ¶¶127, 129, 130).

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

• Issued: June 23, 2020
• Technology Synopsis: This patent claims a method initiated by user interaction, where a server delivers a first code to a user's device. This code, which is not pre-installed, executes to initiate the streaming of audio and video from the user's device to the server for recording (’142 Patent, col. 15:39-16:49; Compl. ¶¶138-141).
• Asserted Claims: At least claim 1 (Compl. ¶135).
• Accused Features: The Softermii System, which allegedly delivers executable code to a user's browser in response to user interaction to begin recording and streaming (Compl. ¶¶138, 139).

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

• Issued: November 24, 2020
• Technology Synopsis: This patent claims a method of receiving streamed digital media at a host back end and remotely recording it as a sequentially stored file. The method includes generating a URL pointer to the stored file and enabling other digital material (e.g., images, audio) to be associated with it (’707 Patent, col. 15:47-16:62; Compl. ¶¶147-152).
• Asserted Claims: At least claim 1 (Compl. ¶146).
• Accused Features: The Softermii System's alleged process of receiving and recording streamed media on its servers and generating URLs to provide access to the recordings (Compl. ¶¶147, 149, 150).

U.S. Patent No. 10,951,855 - “Remotely Accessed Virtual Recording Room”

• Issued: March 16, 2021
• Technology Synopsis: This patent claims a secure, distributed recording system comprising an application on a mobile front-end device and a host back-end server system. In response to user interaction, the host delivers a stream number to the application, which is then used to initiate secure streaming to the host for recording, without first storing a complete file locally (’855 Patent, col. 15:64-16:67; Compl. ¶¶157-166).
• Asserted Claims: At least claim 1 (Compl. ¶156).
• Accused Features: The Softermii System, which allegedly operates as a secure, distributed system using an application on a mobile device and host servers that deliver a "stream number" to initiate streaming (Compl. ¶¶158-161).

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

• Issued: September 21, 2021
• Technology Synopsis: This patent claims a method for network-based recording where the recording is accomplished "using only executable code delivered to the user front end from the host back end." This code enables recording without requiring other recording software to be installed on the user's device. The method includes storing the recording on the host and generating code to allow access from another location (’833 Patent, col. 15:43-16:11; Compl. ¶¶170-176).
• Asserted Claims: At least claim 1 (Compl. ¶169).
• Accused Features: The Softermii System's alleged method of network-based recording and delivery, which is accomplished via executable code delivered from its servers to the user's browser (Compl. ¶¶171, 172).

III. The Accused Instrumentality

Product Identification

• The complaint names the "Softermii Video Products and Services" and the enabling "Softermii System" as the accused instrumentalities (Compl. ¶¶14, 15). Specific products and services listed include the VidRTC framework, the Apartmii engine, HIPPAA-Video, the Parta application, the Events10X online platform, and Softermii WebRTC development services (Compl. ¶14).

Functionality and Market Context

• The accused instrumentality is a suite of software and services for developing and deploying video communication applications (Compl. ¶12). The complaint alleges these services are based on WebRTC (Web Real-Time Communication), a browser-native protocol for peer-to-peer streaming of audio and video (Compl. p. 18). The system allegedly operates via a client-server architecture where a user's browser (the front end) communicates with Softermii's servers (the back end) to establish connections, stream media, and record sessions (Compl. ¶83). The complaint presents a system diagram illustrating this architecture, showing a client device communicating with a signaling server and an audio/video server (Compl. p. 20). These services are marketed for various industries including healthcare, real estate, and events (Compl. ¶12, p. 38).

IV. Analysis of Infringement Allegations

U.S. Patent No. 9,161,068 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A primary question will be the construction of the phrase "without using any recording software installed on the user front end." Defendant may argue that a modern web browser, with its native WebRTC APIs for media capture, constitutes "recording software installed on the user front end." Plaintiff may counter that the patent, with a 2004 priority date, intended this phrase to mean third-party plugins or standalone applications, not the inherent functionality of a standard browser.
  • Technical Questions: What evidence does the complaint provide that the accused system performs the step of "generating code" specifically for the purpose of "facilitating access"? While the complaint alleges access is provided after recording, it does not detail the mechanism by which a specific "code" is generated to enable this access, distinct from a standard URL link.

U.S. Patent No. 9,467,728 Infringement Allegations

• Identified Points of Contention:
  • Technical Questions: What evidence supports the allegation that the Softermii System uses a "stream number" delivered from the server to the client application to initiate a stream? WebRTC session establishment involves exchanging Session Description Protocol (SDP) information, but whether this maps to the claimed "stream number" will be a key technical question.
  • Scope Questions: Does the browser-executable code delivered by Softermii's servers (Compl. ¶87) constitute an "application" as that term is used in the claim? The parties may dispute whether a web script or series of scripts rises to the level of an "application" in the context of the patent.

V. Key Claim Terms for Construction

• The Term: "recording software installed on the user front end" (from the '068 Patent)

• Context and Importance: This term is critical because the accused system operates within a standard web browser using native WebRTC APIs. The case may turn on whether a browser's built-in media capabilities are considered "recording software installed on the user front end," which would allow Defendant to argue non-infringement.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: Practitioners may argue the patent's goal of simplicity and avoiding "extensive computer system requirements" ('068 Patent, col. 1:42-44) suggests the term refers to any software on the client device that performs recording functions, including the browser itself.
  • Evidence for a Narrower Interpretation: The specification contrasts the invention with systems that "require some type of additional ‘plug in’ or other additional custom software application to be downloaded and installed locally" ('068 Patent, col. 6:1-5). This language suggests the term was intended to mean third-party add-ons or separate programs, not the standard, built-in functionality of a universally available web browser.

• The Term: "stream number" (from the '728 Patent)

• Context and Importance: The infringement allegation hinges on whether the accused WebRTC-based system uses an element that meets the definition of a "stream number." The construction of this term will define the scope of evidence Plaintiff must produce regarding the technical details of Defendant's session initiation protocol.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification does not appear to provide a specific, narrow definition. Plaintiff may argue that any unique identifier—such as a session ID or a unique token within a URL generated by the server and used by the client to establish a specific media stream—satisfies this limitation.
  • Evidence for a Narrower Interpretation: Defendant may point to specific embodiments in the shared specification to argue that "stream number" implies a specific type of identifier (e.g., a sequential integer, as suggested by "video number" in col. 8:30-32 of the '068 patent) that is functionally distinct from the session descriptors used in a standard WebRTC handshake.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Softermii indirectly infringes by providing "user guides, blog posts, events, and promotional materials" to customers in Texas (Compl. ¶11). These allegations may support a claim for induced infringement by suggesting Softermii actively encourages its customers to use the accused services in an infringing manner.

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

• A core issue will be one of temporal scope and claim construction: can patent claims with a 2004 priority date, written to solve the problem of browser plugins (like Flash), be construed to cover modern systems that use native, standardized browser APIs like WebRTC? The dispute over the meaning of "recording software installed on the user front end" will be central to this question.
• A key evidentiary question will be one of technical implementation: what are the specific protocols and data structures used by the Softermii System to initiate and manage a video stream? The case will require a detailed technical analysis to determine if Softermii's use of session descriptors and URLs is functionally equivalent to the claimed methods of using a "stream number" or "generating code" to establish and provide access to a recording.