DCT
6:24-cv-00270
Cutting Edge Vision LLC v. T-Mobile US Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cutting Edge Vision, LLC (Arizona)
- Defendant: T-Mobile US, Inc. and T-Mobile USA, Inc. (Delaware/Washington)
- Plaintiff’s Counsel: Pakis, Giotes, Page & Burleson, P.C.
- Case Identification: 6:24-cv-00270, W.D. Tex., 10/11/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because T-Mobile conducts business operations, maintains retail stores, and operates cellular infrastructure within the district.
- Core Dispute: Plaintiff alleges that Defendant’s unlicensed Motorola and T-Mobile branded smartphones infringe patents related to automatically uploading pictures from a camera-enabled device under specific network conditions.
- Technical Context: The technology addresses methods for automatically backing up digital photos from mobile devices to remote storage while managing cellular data costs by restricting uploads to periods without potential fees, such as when not roaming.
- Key Procedural History: The complaint details an extensive licensing program, with Plaintiff having licensed the patent family to twelve major mobile device manufacturers, including Samsung, LG, and Sony. It also notes a history of prior enforcement litigation against other manufacturers—including OnePlus, BLU, HTC, Sonim, and TCL—that resulted in license agreements or settlements. Plaintiff asserts it provided notice of infringement to Motorola, the manufacturer of many of the accused devices, in August 2016. The complaint also notes that T-Mobile was previously a party in a case involving OnePlus, which could be relevant to establishing knowledge for willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2005-10-17 | Earliest Priority Date for ’761 and ’472 Patents |
| 2016-08-31 | Plaintiff first notified Motorola of alleged infringement |
| 2018-08-28 | U.S. Patent 10,063,761 Issued |
| 2019-07-16 | Plaintiff filed suit against OnePlus Technology |
| 2019-11-04 | Plaintiff filed suit against BLU Products Inc. |
| 2020-11-03 | Plaintiff filed suit against HTC Corporation |
| 2021-04-16 | Plaintiff filed suit against Sonim Technologies, Inc. |
| 2021-10-19 | U.S. Patent 11,153,472 Issued |
| 2022-03-16 | Plaintiff filed suit against TCL |
| 2024-10-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent 10,063,761 - Automatic Upload of Pictures from a Camera, issued August 28, 2018
The Invention Explained
- Problem Addressed: The complaint asserts that the patent solves the technical problem of how to designate and automatically upload images from a mobile device over a cellular network without incurring "exorbitant fees during peak hours or roaming periods" (Compl. ¶34). The patent background also discusses general usability issues with cameras but the claims focus on the upload process (’761 Patent, col. 1:32-48).
- The Patented Solution: The invention is a camera system (such as a smartphone) with a cellular interface and a controller. A user can select an option to automatically upload pictures, but the controller is configured to perform the upload only after confirming specific conditions are met. Crucially, the controller must determine, using data from the cellular interface, that the device is in a "period without potential cellular network access fees" before initiating the upload to a remote service (’761 Patent, col. 17:1-19; Compl. ¶28). The patent specification discusses equipping a camera with a wireless interface to connect to the internet and offload pictures to remote printing or storage services (’761 Patent, col. 12:1-48).
- Technical Importance: This technology provides a method for automatic photo backup, a valuable convenience feature, while giving users control over potentially high cellular data costs, a significant concern for mobile device users (Compl. ¶34).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-4 and 16 (Compl. ¶27).
- Independent Claim 1 recites a camera system comprising:
- a lens, cellular interface, image sensor, non-volatile local memory, and a touch sensitive display; and
- a controller configured to receive a user selection of an upload option that instructs the device to confine automatic uploads to "periods without potential cellular network access fees"; and
- the controller is further configured to automatically connect to a remote picture hosting service and upload pictures after receiving (1) data from the cellular interface allowing the upload, (2) an indication of internet connectivity, and (3) an indication a user has designated pictures for upload.
U.S. Patent 11,153,472 - Automatic Upload of Pictures from a Camera, issued October 19, 2021
The Invention Explained
- Problem Addressed: Like its parent patent, the ’472 Patent is directed to solving the technical problem of uploading images from a mobile device without incurring unexpected or high cellular data fees (Compl. ¶44). The patent shares a common specification with the ’761 patent.
- The Patented Solution: The patent describes a camera system that connects to an "internet-based" "picture hosting service." The system allows a user to select an upload option that confines uploads to periods without increased cellular fees (e.g., when not roaming). The controller is configured to automatically enable the upload only when a set of conditions are met, including a confirmation (using data from the cellular interface) that the device is within a fee-free period and that pictures have been designated for upload (’472 Patent, col. 17:1-39; Compl. ¶37).
- Technical Importance: The solution provides a specific, multi-condition logical process for managing automated photo backups, which the complaint alleges was an unconventional improvement over prior art systems that relied on local processes like timers (Compl. ¶44).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 5, and dependent claims 2 and 6 (Compl. ¶36).
- Independent Claim 1 recites a camera system with a controller configured to enable an upload to an internet-based picture hosting service during a period where (1) the upload is allowed based on being within a period "without potentially increased cellular network access fees" as determined by data from the cellular interface, (2) the system is connected to the internet, and (3) at least one picture has been designated for upload.
- Independent Claim 5 recites a similar system where the upload occurs during a period in which (1) the controller has received a user selection for the fee-avoiding upload option, (2) the controller has confirmed the fee-free period using data from the cellular interface, (3) the system is connected to the internet, and (4) pictures have been designated for upload.
III. The Accused Instrumentality
Product Identification
- A wide range of "camera-enabled mobile devices and smartphones," specifically unlicensed Motorola and T-Mobile branded (REVVL) models, are accused of infringement (Compl. ¶¶1, 6). The list includes dozens of models released over several years, such as the Motorola Moto Razr (2023), Motorola moto g stylus 5G (2022), and REVVL 6x PRO 5G (Compl. ¶6).
Functionality and Market Context
- The complaint alleges that the Accused Devices provide an "upload option selectable on a user interface" that allows a user to "confine automatic picture upload to periods without potential cellular network access fees (e.g., to upload only when not roaming)" (Compl. ¶¶ 28, 37). This functionality is described as allowing a user to select device folders for upload, after which the device automatically connects to an internet-based picture hosting service and performs the upload once the pre-set conditions are met (Compl. ¶¶ 28, 37, 38). The complaint positions these devices as being sold by T-Mobile without a license from Plaintiff, in contrast to devices from twelve other major manufacturers who are licensed (Compl. ¶¶ 14-16).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’761 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a controller configured to... receive, via the touch sensitive display, a user selection of an upload option that instructs the device to confine automatic picture upload to periods without potential cellular network access fees | The Accused Devices include an upload option selectable on a user interface that instructs the device to confine automatic picture upload to periods without potential cellular network access fees (e.g., to upload only when not roaming). | ¶28 | col. 17:1-3 |
| automatically connect to a remote picture hosting service and cause an upload... after receiving... data from the cellular interface used by the controller to determine that the upload is allowed | The controller is configured to automatically upload designated photos over a cellular interface... after the device confirms that upload is allowed during the current period. | ¶28 | col. 17:4-11 |
| after receiving... an indication that the system is connected to the internet via the cellular interface | The upload automatically occurs after the device... receives an indication that the system is connected to the internet via the cellular interface. | ¶28 | col. 17:12-14 |
| after receiving... an indication... that a user has elected an option to designate at least one picture... to be uploaded | The upload automatically occurs after the device... receives an indication a user has elected an option to designate at least one picture to be uploaded (through a selection of device folders for upload). | ¶28 | col. 17:15-19 |
’472 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a controller configured to... automatically connect to a picture hosting service that is internet-based and enable an upload to the picture hosting service | The controller is configured to automatically connect to a picture hosting service that is internet-based and enable an upload to the picture hosting service. | ¶37 | col. 17:20-25 |
| The automatic connection and enabling of the upload occurs during any period... in which... the upload is allowed because the system is within one of the periods without potentially increased cellular network access fees, as determined using data from the cellular interface | The automatic connection and enabling of the upload occurs during a period where upload is allowed because the system is within a fee-free period, determined using data from the cellular interface. | ¶37 | col. 17:26-33 |
| The automatic connection and enabling of the upload occurs during any period... in which... at least one image sensor-captured picture stored in the local memory has been designated through the touch sensitive display | The automatic upload occurs when at least one picture has been designated through the touch sensitive display... as part of the group of pictures to be uploaded (through a selection of device folders for upload). | ¶37 | col. 17:34-39 |
Identified Points of Contention
- Scope Questions: The complaint uses "to upload only when not roaming" as an example of a "period without potential cellular network access fees" (Compl. ¶28). A primary point of dispute may be whether this claim language also reads on the common "upload on Wi-Fi only" feature of modern smartphones. While this feature achieves the same goal of avoiding cellular fees, the claims require the determination to be made "using data from the cellular interface." This raises the question of whether simply detecting the absence of a cellular connection and the presence of a Wi-Fi connection meets this limitation, or if the claim requires an affirmative query to the cellular modem about its fee/roaming status.
- Technical Questions: The complaint makes a conclusory allegation that the controller uses "data from the cellular interface" to make its determination (Compl. ¶¶ 28, 37). A key technical question for the court will be what specific data from the cellular interface is used by the accused Android operating system and its photo backup applications, and whether that data is used in the manner recited by the claims.
V. Key Claim Terms for Construction
- The Term: "periods without potential cellular network access fees"
- Context and Importance: This term is the central inventive concept recited in the asserted claims of both patents. The outcome of the infringement analysis will likely depend heavily on its construction, as it defines the condition that triggers the patented automatic upload. Practitioners may focus on this term because its scope will determine whether common device features, like "upload on Wi-Fi only," fall within the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint argues the patent solves the problem of avoiding "exorbitant fees during peak hours or roaming periods," suggesting a focus on the economic outcome rather than a specific technical method (Compl. ¶¶ 34, 44). The specification's discussion of confining transmission to "periods of low network usage" could also support a broader, purpose-oriented definition (’761 Patent, col. 12:67-68).
- Evidence for a Narrower Interpretation: The claims explicitly require that the determination of this period be made "using data from the cellular interface" (’761 Patent, cl. 1; ’472 Patent, cl. 1, 5). A party could argue this narrows the term to conditions directly ascertained from the cellular modem itself (e.g., roaming status, network generation, signal strength) and excludes conditions based on the absence of a cellular connection or the presence of an alternative like Wi-Fi.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that T-Mobile induced infringement by "inducing others, including customers, suppliers, and distributors, to make, import, use, sell and/or offer for sale at least the Accused Devices" (Compl. ¶¶ 31, 41).
- Willful Infringement: Willfulness is alleged based on T-Mobile acting with knowledge of the patents and their infringement (Compl. ¶¶ 32, 42). The complaint does not allege a direct notice letter was sent to T-Mobile. However, it establishes a basis for knowledge by noting T-Mobile was a named party in a prior lawsuit involving the same patent family (against OnePlus) and that the manufacturer of many accused devices (Motorola) was on notice since 2016 (Compl. ¶¶ 17, 21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim term "periods without potential cellular network access fees," particularly as determined "using data from the cellular interface," be construed to cover the common smartphone feature of "upload on Wi-Fi only"? Or is its meaning limited to states directly reported by the cellular modem, such as roaming status?
- A key evidentiary question will follow from claim construction: assuming a viable construction, what evidence demonstrates that the accused Android-based devices technically operate as claimed? Specifically, how do the operating system and associated photo-backup applications use data from the cellular interface to gate the automatic upload, as opposed to simply detecting the presence of a Wi-Fi network?
- A central question for damages and willfulness will be the effect of Plaintiff's extensive licensing and litigation history. The court will need to assess how the established royalty rates from twelve licensees and T-Mobile's alleged pre-suit knowledge from prior litigation impact the calculations for reasonable royalty damages and potential willfulness enhancement.